3 Week 3: Authorship & Welfare Theory (double seminar) 3 Week 3: Authorship & Welfare Theory (double seminar)
Lecture 4: Welfare Theory Lecture 5: Authorship
3.1 Video lectures 3.1 Video lectures
Video lectures 3
3.2 US Readings 3.2 US Readings
3.2.1. William Fisher, Promises to Keep (2004), Chapter 6
3.2.2 Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic 3.2.2 Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic
97 Civ. 9248 (HB)
ALEXANDER LINDSAY, Plaintiff
-against-
The Wrecked and Abandoned Vessel R.M.S. TITANIC, HER ENGINES, TACKLE, EQUIPMENT, FURNISHINGS, Located Within One Nautical Mile of a Point Located at 41°, 43'32" North Latitude and 49°, 56'49" West, and ARTIFACTS, and VIDEO Located at 17 Battery Place, New York, NY, in rem, and R.M.S. TITANIC, INC.,TITANIC VENTURES LIMITED PARTNERSHIP, OCEANIC RESEARCH AND EXPLORATION LIMITED, SUAREZ CORPORATION INDUSTRIES, INC., and DISCOVERY COMMUNICATIONS, INC., d.b.a. THE DISCOVERY CHANNEL, in personam, Defendants.[1]
United States District Court Southern District of New York.
October 13, 1999.
OPINION & ORDER
HAROLD BAER, JR., District Judge:
The plaintiff, Alexander Lindsay, commenced this lawsuit in 1997, seeking damages based upon his share of the revenues generated by the salvage operations conducted at the wreck site of the famous sunken vessel, the R.M.S. Titanic. Defendants R.M.S. Titanic, Inc. ("RMST") and Suarez Corporation Inc. ("SCI") answered and asserted counterclaims against the plaintiff for copyright infringement. The plaintiffs' amended complaint joined defendant Discovery Communications, Inc. ("DCI") and added claims of copyright infringement against RMST, SCI and DCI. Pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, the defendants now move [2] to dismiss the plaintiffs copyright claims alleged in the amended complaint.[2] The plaintiff crossmoves for summary judgment as to both his salvage and copyright claims. For the reasons discussed below, the defendants' motions are DENIED in part and GRANTED in part, and the Court reserves decision on the plaintiffs motion.
I. BACKGROUND
The plaintiff, a citizen of the United Kingdom and resident of the State of New York, is an independent documentary film maker engaged in the business of creating, producing, directing, and filming documentaries: (Amended Complaint ("Am. Compl.") ¶ 4.) Defendant R.M.S. Titanic, Inc. ("RMST") is a publicly traded U.S. corporation, organized under the laws of the State of Florida, which conducts business within and has its office and principal place of business in New York City. (Am. Compl. ¶ 8.) Defendant George Tulloch ("Tulloch") is a shareholder, president and member of the board of directors of RMST. (Am. Compl. ¶ 7.) Defendant Titanic Ventures Limited Partnership ("TVLP") is a limited partnership organized under the laws of Connecticut and currently doing business in the State of New York.[3] (Am. Compl. ¶ 9.) Defendant Oceanic Research and [3] Exploration Limited ("OREL") is a Delaware corporation and general partner of TVLP. Defendant Tullqch is also the president and sole shareholder of OREL (defendants RMST, Tulloc, TVLP and OREL collectively as "RMST"). Defendant Suarez Corporation, Inc. ("SCI") is an Ohio corporation doing business in the State of New York. Defendant Discovery Communications, Inc. ("DCI") is a Maryland corporation doing business as "The Discovery Channel", and is engaged in the business of making, financing and distributing documentary films. (Am. Compl. ¶ 13.)
In 1993, RMST was awarded exclusive status as salvor-in-possession of the Titanic wreck site and is therefore authorized to carry on salvage operations at the vessel's wreck site. (Am. Compl. ¶¶ 8, 20.) As a condition of obtaining these rights, RMST allegedly agreed to maintain all the artifacts it recovered during the salvage operations for historical verification, scientific education, and public awareness. (Am. Compl. ¶ 22.)
In 1994, the plaintiff, under contract with a British television company, filmed and directed the British documentary film, "Explorers of the Titanic," a chronicle of RMST's third salvage expedition of the Titanic. (Am. Compl. ¶ 25.) To film this documentary, Lindsay sailed with RMST and the salvage expedition crew to the wreck site and remained at sea for approximately one month. (Am. Compl. ¶ 27.) The plaintiff alleges that during and after filming this documentary in 1994, he conceived a new film project for the Titanic wreck using high illumination lighting equipment. (Am. Compl. ¶ 28.)
The plaintiff later discussed his idea with defendant George Tulloch and, according to the plaintiff, the two agreed to work together on the venture. (Am. Compl. ¶¶ 29.) In March 1995, the plaintiff traveled to New York and developed a comprehensive business plan for the new film project entitled, ''Titanic: A Memorial Tribute." (Am. Compl ¶ 30.) Tulloch allegedly informed the [4] plaintiff that he would agree to the plan — which purported to include provisions for compensating Lindsay for his work on the project — but that Tulloch would have to obtain approval from the RMST Board of Directors. (Am. Compl. ¶ 31.) The plaintiff agreed to join RMST to raise money not only for the film project, but for other aspects of the 1996 salvage operation as well. (Am. Compl. ¶ 32.)
Lindsay moved into an office at RMST in and around April 1995. Around this time, tulloch repeatedly told Lindsay that he would obtain approval from RMSTs Board of Directors for a contract for the plaintiff based upon the terms of Lindsay's film plan. (Am. Compl. ¶ 33.) The contract was to include terms of Lindsay's compensation, including sharing in the profits derived from any film, video and still photographs obtained from the 1996 salvage operation. (Am. Compl. ¶ 36.) This contract was never executed.
As part of his pre-production efforts, the plaintiff created various storyboards for the film, a series of drawings which incorporated images of the Titanic by identifying specific camera angles and shooting sequences "that reflect[ed] Plaintiff's [sic] creative inspiration and force behind his concept for shooting the Subject Work." (Am. Compl. ¶ 38.) The plaintiff also alleges that he, along with members of his film team, designed the huge underwater light towers that were later used to make the film. (Am. Compl. ¶ 43.) Lindsay also "personally constructed the light towers" and thereafter "for approximately 3-4 weeks directed, produced, and acted as the cinematographer of the Subject Work; underwater video taping of the Titanic wreck site, and otherwise participated in the 1996 salvage operation." (Am. Compl. ¶¶ 45-46.) He also directed the filming of the wreck site from on board the salvage vessel "Ocean Voyager" after leading daily planning sessions with the crew of the Nautile, the submarine used to transport the film equipment and photographers to the underwater wreck site. (Am. Compl. ¶ 47.) The purpose of these sessions was to provide the [5] photographers with "detailed instructions for positioning and utilizing the light towers." Id.)
The plaintiff now alleges that he was never fully compensated for his services and that, inter alia, the defendants are now "unlawfully profiting from the exploitation of the" film project at issue. (Am. Compl. ¶¶ 57-60.)
The plaintiff originally brought this action under the Court's admiralty jurisdiction to enforce his salvage claims against defendants RMS Titanic, Inc., Titanic Ventures Limited Partners, Oceanic Research and Exploration Limited (collectively as "RMST"), and Suarez Corporation.
These defendants moved to dismiss the plaintiffs salvage claims. By order dated September 2, 1998, I denied the motion to dismiss, having found that the plaintiff had met his burden of pleading all the necessary elements for bringing a salvage claim. See Lindsay v. Titanic, No. 97 Civ. 9248, 1998 WL 557591 (S.D.N.Y. Sept. 2, 1998).
RMST and SCI then answered the complaint and included counterclaims for copyright infringement arising from the plaintiff's use of certain video footage taken from the wreck during the 1996 expedition. By order dated April 9, 1999, I granted the plaintiffs motion to amend his complaint to add copyright infringement claims against RMST and SCI and to join Discovery Communications, Inc. ("DCI") d/b/a The Discovery Channel, for copyright infringement of what appears to be the same footage at issue in the defendants' counterclaims.
The plaintiffs amended complaint now includes 13 causes of action, including those based on copyright infringement, salvage claims, and state law causes of action for fraud, breach of contract, and conversion. The defendants now move pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure to dismiss Lindsay's copyright claims, and the plaintiff cross-moves for summary judgment on his copyright and salvage claims.
[6] II. DISCUSSION
A. Standards for Motion to Dismiss
Dismissal of a complaint pursuant to Rule 12(b)(6) is permitted "only where itappears beyond doubt that the plaintiff can prove no set of facts in support of the claim which would entitle him to relief." Scotto v. Almenas, 143 F.3d 105, 109-10 (2d Cir. 1998). "The task of the court in ruling on a Rule 12(b)(6) motion is 'merely to assess the legal feasibility of the complaint not to assay the weight of the evidence which might be offered in support thereof.'" Cooper v. Parsky, 140 F.3d 433, 440 (2d Cir. 1998) (quoting Ryder Energy Distribution Com. v. Merrill Lynch Commodities, Inc., 748 F.2d 774, 779 (2d Cir. 1984)). In deciding a 12(b)(6) motion, the Court must accept as true all material facts alleged in the complaint and draw all reasonable inferences in the nonmovant's favor. See Thomas v. City of New York, 143 F.3d 31, 36 (2d Cir. 1998).
B. Copyright Claims
Pleading Requirements
To withstand a motion to dismiss, a complaint based on copyright infringement must allege: (1) which specific original works are the subject of the copyright claim; (2) that the plaintiff owns the copyrights in those works; (3) that the copyrights have been registered in accordance with the statute; and (4) "by what acts during what time" the defendant infringed the copyright. Kelly v. L.L. Cool J., 145 F.R.D. 32, 35 (1992), aff'd, 23 F.3d 398 (2d Cir.), cert. denied, 513 U.S. 950 (1994).
Although the complaint is not a model of clarity, it meets for the most part, these standards. With regard to the first element, the complaint refers to the plaintiffs copyright interest in the "Subject Work," and — as the defendants point out — makes several different references to what [7] exactly this work constitutes (See Am. Compl. ¶¶ 28, 76, 78.)[4] However, piecing together these various allegations, and drawing all reasonable inferences in the plaintiff's favor, it becomes clear for purposes of this motion that the "Subject Work" consists of the illuminated underwater footage that was filmed utilizing the large light towers that Lindsay helped design and construct. (See Am. Compl. ¶ 46.) Regarding the second and third elements, the plaintiff alleges that he owns these works, (Am. Compl. ¶ 55), and that they were accepted and registered with the U.S. Register of Copyrights. (Am. Compl. ¶ 78.)
As to the fourth element — how and when the defendants infringed the copyright — the plaintiff has satisfied his burden as to all the defendants except SCI. With respect to RMST, the complaint alleges that RMST "unlawfully enter[ed] into the exclusive license agreement with DCI," (Am. Compl. ¶ 62), "enered [sic] into contracts conveying video clips and still images . . . to various Titanic artifacts exhibitions throughout the world," and "RMST displays images from the Subject Work on its INTERNET web site." (Am. Compl. ¶ 63.) The complaint alleges that DCI incorporated portions of the illuminated footage into three separate documentaries that aired on certain dates in 1997. (Am. Compl.¶ 64.)
The plaintiffs' contentions against SCI, however, do not fare as well. Lindsay alleges that SCI "used plaintiff's name and likeness" to promote a 1996 cruise expedition to observe the salvage operations. (Am. Compl. ¶ 42.) In addition, the amended complaint charges that "SCI did knowingly and willfully infringe upon Plaintiff's copyright . . . by unlawfully purchasing and/or otherwise obtaining copies of the Subject Work" and has and will "exploit and profit from the Subject Work." [8] (Am. Compl. ¶ 73.) I find that these vague and conclusory allegations are, as a matter of law, insufficient withstand the instant motion. Kelly, 145 F.R.D. at 36, n.3 ("Rule 8 requires that the particular infringing acts be set out with some specificity. Broad, sweeping allegations of infringement do not comply with Rule 8."). Accordingly, the plaintiffs third cause of action as against SCI is hereby dismissed.
2. Authorship
The defendants first argue that the plaintiff cannot have any protectable right in the illuminated footage since he did not dive to the ship and thus did not himself actually photograph the wreckage. This argument, however, does not hold water.
The Copyright Act of 1976 provides that copyright ownership "vests initially in the author or authors of the work." 17 U.S.C. §201(a). Generally speaking, the author of a work is the person "who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection." Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989) (citing 17 U.S.C. §102). In the context of film footage and photography, it makes intuitive sense that the "author" of a work is the individual or individuals who took the pictures, i.e. the photographer. However, the concept is broader than as argued by the defendants.
For over 100 years, the Supreme Court has recognized that photographs may receive copyright protection in ''so far as they are representatives of original intellectual conceptions of the author" Burrow-Giles Lithographic Co. v. Sarony, 111 U.S . 53, 58 (1884). An individual claiming to be an author for copyright purposes must show "the existence of those facts of originality, of intellectual production, of thought, and conception." Feist Publications. Inc. v. Rural Telephone Service Company Inc., 499 U.S. 340, 346-347 (1991) (citing Burrow-Giles, 111 U.S. at 59-60). [9] Some elements of originality in a photograph includes "posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any variant involved." Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.), cert. denied, 506 U.S. 934 (1992). Taken as true, the plaintiffs allegations meet this standard. Lindsay's alleged storyboards and the specific directions he provided to the film crew regarding the use of the lightowers and the angles from which to shoot the wreck all indicate that the final footage would indeed be the product of Lindsay's "original intellectual conceptions."
The fact that Lindsay did not literally perform the filming, i.e. by diving to the wreck and operating the cameras, will not defeat his claims of having "authored" the illuminated footage. The plaintiff alleges that as part of his pre-production efforts, he created so-called "storyboards," a series of drawings which incorporated images of the Titanic by identifying specific camera angles and shooting sequences. (Am. Compl. ¶ 38.) During the expedition itself, Lindsay claims to have been "the director, producer and cinematographer" of the underwater footage. (Am. Compl. ¶ 46.) As part of this role, Lindsay alleges that he directed daily planning sessions with the film crew to provide them with "detailed instructions for positioning and utilizing the light towers." (Am. Compl. ¶ 47.) Moreover, the plaintiff actually "directed the filming" of the Titanic from on board the Ocean Voyager, the salvage vessel that held the crew and equipment. (Am. Compl. ¶ 47) Finally, Lindsay screened the footage at the end of each day to "confirm that he had obtained the images he wanted." (Am. Compl. ¶ 48.)
All else being equal, where a plaintiff alleges that he exercised such a high degree of control over a film operation — including the type and amount of lighting used, the specific camera angles to be employed, and other detail-intensive artistic elements of a film — such that the final product [10] duplicates his conceptions and visions of what the film should look like, the plaintiff may be said "author" within the meaning of the Copyright Act.
Indeed, the instant case is analogous to Andrien v. Southern Ocean County Chamber of Commerce, 927 F.2d 132 (3d Cir. 1991). There, the Third Circuit recognized that "a party can be considered an author when his or her expression of an idea is transposed by mechanical or rote transcription into tangible form under the authority of the party." Id. at 135. The plaintiff in Andrien had received a copyright for a map of Long Beach Island, New Jersey which was created from a compilation of pre-existing maps and the plaintiffs personal survey of the island. To transform his concepts and the information he had gathered into the final map, the plaintiff hired a printing company to print the map in final form. The plaintiff testified that the maps were made by the printer "with me at her elbow practically" and that he spent time each day at the print shop during the weeks the map was made, directing the map's preparation in specific detail. In reversing the lower court's granting of summary judgment against the plaintiff, the court noted that the printers had not "intellectually modified or technically enhanced the concept articulated by Andrien," nor did they "change the substance of Andrien's original expression." Id. at 135. See also Lakedreams v. Taylor 932 F.2d 1103, 1108 (5th Cir. 1991) (noting that authors may be entitled to copyright protection even if they do not ''perform with their own hands the mechanical tasks of putting the material into the form distributed to the public"). It is too early to tell whether the allegations of the plaintiff here satisfy the copyright laws, but crediting his story as I must, dismissal is unwarranted at this stage of the litigation.
The defendants argue that Geshwind v. Garrick, 734 F.Supp. 644 (S.D.N.Y. 1990), vacated in part, 738 F.Supp. 792 (S.D.N.Y. 1990), affd, 927 F.2d 594 (2d Cir.), cert. denied, 502 U.S. 811-[11]-1991), mandates dismissal. That case, however, is inapposite. The plaintiff there, a producer of computer graphics animation and special effects, had contracted to produce a 15-second animation piece. The plaintiff hired Digital, a computer graphics company to, in essence, produce the animated piece. The court in Geshwind found that Digital, by its employee, was the "author" within the meaning of the Copyright Act. In ruling that the plaintiff was not an "author," Judge Patterson found that the plaintiff there had made only minimal contributions to the final product and had only some, if any, of his "suggestions" incorporated into the final product. Id. at 650. This is in stark contrast to the case at bar where Lindsay alleges that his contributions — not suggestions — were anything but minimal, and he describes himself as the driving force behind the final film product at issue here.
3. Joint-Authorship
In the alternative, the defendants argue that Lindsay is, at best, a joint author of the underwater footage with RMST. This contention is based on the notion that Christian Petron, the main photographer of the film, was at least a joint-author of the footage with the plaintiff. Since Petron's participation was accomplished under the auspices of a work for hire agreement with RMST, the defendants' argument continues, any rights to authorship Petron may have received via his filming were conferred upon RMST. As a joint author with the plaintiff then, RMST cannot be liable for copyright infringement since each co-author acquires an undivided interest in the entire work and has the right to use the work as he or she pleases. Thomson v. Larson, 147 F .3d 195; 199 (2d Cir. 1998); Weissman v. Freeman, 868 F.2d 1313, 1318 (2d Cir.) ("[A]n action for infringement between joint owners will not lie because an individual cannot infringe his own copyright."), cert. denied, 493 U.S. 883 (1989). Similarly, any copyright claim against DCI would fail since RMST, as a joint author, has the right to license the joint work to third parties. Thomson, 147 F.3d at 199.
[12] A "joint work" under the Copyright Act is one "prepared by two or more authors with the Intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U.S.C. §101. To prove co-authorship status, it must be shown by the individual claiming co-authorship status that each of the putative co-authors (1) fully intended to be co-authors, and (2) made independently copyrightable contributions to the work. Thomson, 147 F.3d at 200 (citing Childress v. Taylor, 945 F.2d 500, 507-508 (2d Cir. 1991)).
Drawing all inferences in favor of Lindsay, I conclude that no such status existed in the case at bar. With regard to the intent prong of the analysis, "[a]n important indicator of authorship is a contributor's decision making authority over what changes are made and what is included in a work." Id. at 202-3 (citing Erickson v. Trinity Theatre. Inc., 13 F.3d 1061, 1071-72 (7th Cir. 1994) (actor's suggestions of text did not support a claim of co-authorship where the sole author determined whether and where such suggestions were included in the work)). In other words, where one contributor retains a so-called "veto" authority over what is included in a work, such control is a strong indicator that he or she does not intend to be co-authors with the other contributor. According to the pleadings, the plaintiff exercised virtually total control over the content of the film as "the director, producer and cinematographer" of the production. (Am. Compl. ¶ 46.) Additionally, he briefed the photographers with regards to, inter alia, the specific camera angles they were to employ, (Am. Compl. ¶ 47), and Lindsay screened the film each day to make sure the proper footage was obtained. (Am. Compl. ¶ 48.) Based on these allegations, and implicit in the notion that the film crew was simply "following directions,"[5] Lindsay retained what appeared to be exclusive authority [13] over what was included in the footage. Assuming as I must at this stage of the litigation that this is true, it can hardly be said that the plaintiff intended Petron — or any other contributor — to be a coauthor. Accordingly, the claims by RMST that it — by virtue of Petron's role as a photographer under a work-for-hire agreement — was a joint-author within the meaning of the Copyright Act must fail.
4. Accounting
Lindsay's fifth cause of action seeks an accounting by DCI, SCI, and RMST of moneys these defendants received from their unauthorized use of the copyrighted footage at issue. Regardless of whether this Court — or a jury — ultimately finds that Lindsay and RMST are joint authors, with respect to DCI, the plaintiffs complaint here sinks under its own weight.
The duty to provide an accounting from profits obtained runs only between co-owners of a copyright. Margo v. Weiss, No. 96 Civ. 3842, 1998 WL 2558, at *9 (S.D.N.Y. Jan. 5, 1998) ("[T]he duty to account for profits presupposes a relationship as co-owners of the copyright. . . ."); cf. Thomson, 147 F.3d at 199 ("[E]ach joint author has the right to use or to license the work as he or she wishes, subject only to the obligation to account to the other joint owner for any profits that are made.") (emphasis added); Kaplan v. Vincent, 937 F.Supp. 307, 316 (S.D.N.Y. 1996) ("[E]ach author maintains the right to use or license the work, subject only to an accounting to the other co-owner.") (emphasis added). Because DCI is only a licensee of a putative joint owner of the copyright at issue here, Lindsay's claim for an accounting fails as a matter of law and must be [14] dismissed.[6]
III. CONCLUSION
For the reasons discussed above, the defendants' motions are DENIED in part and GRANTED in part such that the plaintiffs cause of action for copyright infringement against SCI is dismissed, as is Lindsay's cause of action for an accounting with respect to DCI and SCI only. The plaintiffs remaining copyright-based claims[7] and other causes of action have survived this motion.[8] The current pre-trial scheduling order remains in place, and the case is on the January 2000 trailing trial calendar.
SO ORDERED.
Dated: October 12, 1999
New York, New York
[1] Prior to the issuance of this opinion, the plaintiff dismissed from the case defendant Ben Suarez, in his individual capacity as president of Suarez Corporation, Inc., pursuant to Rule 41(a)(1) of the Fed. R. Civ. P.
[2] Although the Court has reviewed the voluminous supplementary submissions provided with and after the filing of these motions, I am excluding this virtual sea of materials and decline to convert the defendants' motions to dismiss to motions for summary judgment. Accordingly, I base my ruling on these motions solely on the pleadings. See Amaker v. Weiner, 179 F.3d 48, 51-52 (2d Cir. 1999) (finding that the inclusion of affidavits or exhibits with a motion to dismiss does not require conversion to a motion for summary judgment provided the court does not rely on such submissions in deciding the motion to dismiss). In any event, a cursory review of the documents submitted with these motions reveals that the factual waters of this case are sufficiently muddied so as to warrant denial of summary judgment at this juncture as well.
[3] In May 1993, RMST acquired all the assets and assumed the liabilities of TVLP, a limited partnership that was formed in 1987 for purposes of exploring the Titanic wreck site. (Am. Compl. ¶ 19.)
[4] Lindsay defines the "Subject Work" as: "a new film project for the Titanic wreck using high illumination lighting equipment" (Am. Compl. ¶ 28); "the documentary film Titanic: In a New Light" (Am. Compl., 76); and "the illuminated underwater video footage." (Am. Compl. ¶ 78.)
[5] Along these lines, Lindsay's alleged control over the filming rendered the film crew's role to one of no more than "rote or mechanical transcription that [did] not require intellectual modification," Andrien, 927 F.2d at 135, a contribution that would not be independently copyrightable. Id.; Thomson, 147 F.3d at 200. RMST's claims of joint-authorship would thus fail on this prong as well.
[6] Because the plaintiff fails to state a cognizable copyright claim against defendant SCI, as discussed herein, count five is also dismissed as to defendant SCI.
[7] These causes of action are as follows: declaration of copyright ownership; copyright infringement by RMST; copyright infringement by DCI; and an accounting, with respect to RMST only.
[8] These causes of action, not at issue in the instant motions to dismiss, inculude: breach of contract; breach of implied covenant of good faith; quantum meruit; conversion; "money lent"; fraud; fraudulent misrepresentation; declaration of co-salvor status; and common law fraud and deceit.
3.2.3 Aalmuhammed v. Lee 3.2.3 Aalmuhammed v. Lee
Jefri AALMUHAMMED, Plaintiff-Appellant,
v.
Spike LEE; Forty Acres and a Mule Filmworks, Inc.; By any Means Necessary Cinema, Inc.; Warner Brothers, a division of Time-Warner Entertainment LP; Victor Company of Japan Limited; Largo International N.V.; Largo Entertainment, Inc.; JCV Entertainment, Inc., Defendants-Appellees.
United States Court of Appeals, Ninth Circuit.
[1228] [1229] Philip H. Stillman and Stephen S. Lux, Flynn, Sheridan, Tabb & Stillman, Del Mar, California, for the plaintiff-appellant.
Bruce Isaacs, Karen Brodkin & Jason A. Forge, Wyman, Isaacs, Blumenthal, & Lynne, Los Angeles, California, for the defendants-appellees.
Bruce P. Vann, Kelly, Lytton, Mintz & Vann, Los Angeles, California, for the defendants-appellees.
Before: CANBY, NOONAN, and KLEINFELD, Circuit Judges.
KLEINFELD, Circuit Judge:
This is a copyright case involving a claim of coauthorship of the movie Malcolm X. We reject the "joint work" claim but remand for further proceedings on a quantum meruit claim.
I. FACTS
In 1991, Warner Brothers contracted with Spike Lee and his production companies to make the movie Malcolm X, to be based on the book, The Autobiography of Malcolm X. Lee co-wrote the screenplay, directed, and co-produced the movie, which starred Denzel Washington as Malcolm X. Washington asked Jefri Aalmuhammed to assist him in his preparation for the starring role because Aalmuhammed knew a great deal about Malcolm X and Islam. Aalmuhammed, a devout Muslim, was particularly knowledgeable about the life of Malcolm X, having previously written, directed, and produced a documentary film about Malcolm X.
Aalmuhammed joined Washington on the movie set. The movie was filmed in the New York metropolitan area and Egypt. Aalmuhammed presented evidence that his involvement in making the movie was very extensive. He reviewed the shooting script for Spike Lee and Denzel [1230] Washington and suggested extensive script revisions. Some of his script revisions were included in the released version of the film; others were filmed but not included in the released version. Most of the revisions Aalmuhammed made were to ensure the religious and historical accuracy and authenticity of scenes depicting Malcolm X's religious conversion and pilgrimage to Mecca.
Aalmuhammed submitted evidence that he directed Denzel Washington and other actors while on the set, created at least two entire scenes with new characters, translated Arabic into English for subtitles, supplied his own voice for voice-overs, selected the proper prayers and religious practices for the characters, and edited parts of the movie during post production. Washington testified in his deposition that Aalmuhammed's contribution to the movie was "great" because he "helped to rewrite, to make more authentic." Once production ended, Aalmuhammed met with numerous Islamic organizations to persuade them that the movie was an accurate depiction of Malcolm X's life.
Aalmuhammed never had a written contract with Warner Brothers, Lee, or Lee's production companies, but he expected Lee to compensate him for his work. He did not intend to work and bear his expenses in New York and Egypt gratuitously. Aalmuhammed ultimately received a check for $25,000 from Lee, which he cashed, and a check for $100,000 from Washington, which he did not cash.
During the summer before Malcolm X's November 1992 release, Aalmuhammed asked for a writing credit as a co-writer of the film, but was turned down. When the film was released, it credited Aalmuhammed only as an "Islamic Technical Consultant," far down the list. In November 1995, Aalmuhammed applied for a copyright with the U.S. Copyright Office, claiming he was a co-creator, co-writer, and co-director of the movie. The Copyright Office issued him a "Certificate of Registration," but advised him in a letter that his "claims conflict with previous registrations" of the film.
On November 17, 1995, Aalmuhammed filed a complaint against Spike Lee, his production companies, and Warner Brothers, (collectively "Lee"), as well as Largo International, N.V., and Largo Entertainment, Inc. (collectively "Largo"), and Victor Company of Japan and JVC Entertainment, Inc. (collectively "Victor"). The suit sought declaratory relief and an accounting under the Copyright Act. In addition, the complaint alleged breach of implied contract, quantum meruit, and unjust enrichment, and federal (Lanham Act) and state unfair competition claims. The district court dismissed some of the claims under Rule 12(b)(6) and the rest on summary judgment.
II. ANALYSIS
A. Copyright claim
Aalmuhammed claimed that the movie Malcolm X was a "joint work" of which he was an author, thus making him a co-owner of the copyright.[2] He sought a declaratory judgment to that effect, and an accounting for profits. He is not claiming copyright merely in what he wrote or contributed, but rather in the whole work, as a co-author of a "joint work."[3] The district court granted defendants summary judgment against Mr. Aalmuhammed's copyright claims. We review de novo.[4]
Defendants argue that Aalmuhammed's claim that he is one of the authors of a joint work is barred by the applicable statute of limitations. A claim of authorship of a joint work must be brought within three years of when it accrues.[5] Because creation rather than infringement [1231] is the gravamen of an authorship claim, the claim accrues on account of creation, not subsequent infringement, and is barred three years from "plain and express repudiation" of authorship.[6]
The movie credits plainly and expressly repudiated authorship, by listing Aalmuhammed far below the more prominent names, as an "Islamic technical consultant." That repudiation, though, was less than three years before the lawsuit was filed. The record leaves open a genuine issue of fact as to whether authorship was repudiated before that. Aalmuhammed testified in his deposition that he discussed with an executive producer at Warner Brothers his claim to credit as one of the screenwriters more than three years before he filed suit. Defendants argue that this discussion was an express repudiation that bars the claim. It was not. Aalmuhammed testified that the producer told him "there is nothing I can do for you," but "[h]e said we would discuss it further at some point." A trier of fact could construe that communication as leaving the question of authorship open for further discussion. That leaves a genuine issue of fact as to whether the claim is barred by limitations, so we must determine whether there is a genuine issue of fact as to whether Aalmuhammed was an author of a "joint work."
Aalmuhammed argues that he established a genuine issue of fact as to whether he was an author of a "joint work," Malcolm X. The Copyright Act does not define "author," but it does define "joint work":
A "joint work" is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.[7]
"When interpreting a statute, we look first to the language."[8] The statutory language establishes that for a work to be a "joint work" there must be (1) a copyrightable work, (2) two or more "authors," and (3) the authors must intend their contributions be merged into inseparable or interdependent parts of a unitary whole. A "joint work" in this circuit "requires each author to make an independently copyrightable contribution" to the disputed work.[9]Malcolm X is a copyrightable work, and it is undisputed that the movie was intended by everyone involved with it to be a unitary whole. It is also undisputed that Aalmuhammed made substantial and valuable contributions to the movie, including technical help, such as speaking Arabic to the persons in charge of the mosque in Egypt, scholarly and creative help, such as teaching the actors how to pray properly as Muslims, and script changes to add verisimilitude to the religious aspects of the movie. Speaking Arabic to persons in charge of the mosque, however, does not result in a copyrightable contribution to the motion picture. Coaching of actors, to be copyrightable, must be turned into an expression in a form subject to copyright.[10] The same may be said for many of Aalmuhammed's other activities. Aalmuhammed has, however, submitted evidence that he rewrote several specific passages of dialogue that appeared in Malcolm X, and that he wrote scenes relating to Malcolm X's Hajj pilgrimage that were enacted in the movie. If Aalmuhammed's evidence is accepted, as it must be on summary judgment, these items would have been independently copyrightable. [1232] Aalmuhammed, therefore, has presented a genuine issue of fact as to whether he made a copyrightable contribution. All persons involved intended that Aalmuhammed's contributions would be merged into interdependent parts of the movie as a unitary whole. Aalmuhammed maintains that he has shown a genuine issue of fact for each element of a "joint work."
But there is another element to a "joint work." A "joint work" includes "two or more authors."[11] Aalmuhammed established that he contributed substantially to the film, but not that he was one of its "authors." We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution. We recognize that a contributor of an expression may be deemed to be the "author" of that expression for purposes of determining whether it is independently copyrightable. The issue we deal with is a different and larger one: is the contributor an author of the joint work within the meaning of 17 U.S.C. § 101.
By statutory definition, a "joint work" requires "two or more authors."[12] The word "author" is taken from the traditional activity of one person sitting at a desk with a pen and writing something for publication. It is relatively easy to apply the word "author" to a novel. It is also easy to apply the word to two people who work together in a fairly traditional pen-and-ink way, like, perhaps, Gilbert and Sullivan. In the song, "I Am the Very Model of a Modern Major General," Gilbert's words and Sullivan's tune are inseparable, and anyone who has heard the song knows that it owes its existence to both men, Sir William Gilbert and Sir Arthur Sullivan, as its creative originator. But as the number of contributors grows and the work itself becomes less the product of one or two individuals who create it without much help, the word is harder to apply.
Who, in the absence of contract, can be considered an author of a movie? The word is traditionally used to mean the originator or the person who causes something to come into being, or even the first cause, as when Chaucer refers to the "Author of Nature." For a movie, that might be the producer who raises the money. Eisenstein thought the author of a movie was the editor. The "auteur" theory suggests that it might be the director, at least if the director is able to impose his artistic judgments on the film. Traditionally, by analogy to books, the author was regarded as the person who writes the screenplay, but often a movie reflects the work of many screenwriters. Grenier suggests that the person with creative control tends to be the person in whose name the money is raised, perhaps a star, perhaps the director, perhaps the producer, with control gravitating to the star as the financial investment in scenes already shot grows.[13] Where the visual aspect of the movie is especially important, the chief cinematographer might be regarded as the author. And for, say, a Disney animated movie like "The Jungle Book," it might perhaps be the animators and the composers of the music.
The Supreme Court dealt with the problem of defining "author" in new media in Burrow-Giles Lithographic Co. v. Sarony.[14] The question there was, who is the author of a photograph: the person who sets it up and snaps the shutter, or the person who makes the lithograph from it. Oscar Wilde, the person whose picture was at issue, doubtless offered some creative advice as well. The Court decided that the photographer was the author, quoting various English authorities: "the person who has superintended the arrangement, who has actually formed the picture by [1233] putting the persons in position, and arranging the place where the people are to be—the man who is the effective cause of that"; "`author' involves originating, making, producing, as the inventive or master mind, the thing which is to be protected"; "the man who really represents, creates, or gives effect to the idea, fancy, or imagination."[15] The Court said that an "author," in the sense that the Founding Fathers used the term in the Constitution,[16] was "`he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.'"[17]
Answering a different question, what is a copyrightable "work," as opposed to who is the "author," the Supreme Court held in Feist Publications that "some minimal level of creativity" or "originality" suffices.[18] But that measure of a "work" would be too broad and indeterminate to be useful if applied to determine who are "authors" of a movie. So many people might qualify as an "author" if the question were limited to whether they made a substantial creative contribution that that test would not distinguish one from another. Everyone from the producer and director to casting director, costumer, hairstylist, and "best boy" gets listed in the movie credits because all of their creative contributions really do matter. It is striking in Malcolm X how much the person who controlled the hue of the lighting contributed, yet no one would use the word "author" to denote that individual's relationship to the movie. A creative contribution does not suffice to establish authorship of the movie.
Burrow-Giles, in defining "author," requires more than a minimal creative or original contribution to the work.[19]Burrow-Giles is still good law, and was recently reaffirmed in Feist Publications.[20]Burrow-Giles and Feist Publications answer two distinct questions; who is an author, and what is a copyrightable work.[21]Burrow-Giles defines author as the person to whom the work owes its origin and who superintended the whole work, the "master mind."[22] In a movie this definition, in the absence of a contract to the contrary, would generally limit authorship to someone at the top of the screen credits, sometimes the producer, sometimes the director, possibly the star, or the screenwriter—someone who has artistic control. After all, in Burrow-Giles the lithographer made a substantial copyrightable creative contribution, and so did the person who posed, Oscar Wilde, but the Court held that the photographer was the author.[23]
The Second and Seventh Circuits have likewise concluded that contribution of independently copyrightable material to a work intended to be an inseparable whole will not suffice to establish authorship of a joint work.[24] Although the Second and Seventh Circuits do not base their decisions on the word "authors" in the statute, [1234] the practical results they reach are consistent with ours. These circuits have held that a person claiming to be an author of a joint work must prove that both parties intended each other to be joint authors.[25] In determining whether the parties have the intent to be joint authors, the Second Circuit looks at who has decision making authority, how the parties bill themselves, and other evidence.[26]
In Thomson v. Larson, an off-Broadway playwright had created a modern version of La Boheme, and had been adamant throughout its creation on being the sole author.[27] He hired a drama professor for "dramaturgical assistance and research," agreeing to credit her as "dramaturg" but not author, but saying nothing about "joint work" or copyright.[28] The playwright tragically died immediately after the final dress rehearsal, just before his play became the tremendous Broadway hit, Rent.[29] The dramaturg then sued his estate for a declaratory judgment that she was an author of Rent as a "joint work," and for an accounting.[30] The Second Circuit noted that the dramaturg had no decision making authority, had neither sought nor was billed as a co-author, and that the defendant entered into contracts as the sole author.[31] On this reasoning, the Second Circuit held that there was no intent to be joint authors by the putative parties and therefore it was not a joint work.[32]
Considering Burrow-Giles, the recent cases on joint works[33] (especially the thoughtful opinion in Thomson v. Larson[34] ), and the Gilbert and Sullivan example, several factors suggest themselves as among the criteria for joint authorship, in the absence of contract. First, an author "superintend[s]"[35] the work by exercising control.[36] This will likely be a person "who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be-the man who is the effective cause of that,"[37] or "the inventive or master mind" who "creates, or gives effect to the idea."[38] Second, putative coauthors make objective manifestations of a shared intent to be coauthors, as by denoting the authorship of The Pirates of Penzance as "Gilbert and Sullivan."[39] We say objective manifestations because, were the mutual intent to be determined by subjective intent, it could become an instrument of fraud, were one coauthor to hide from the other an intention to take sole credit for the work. Third, the audience appeal of the work turns on both contributions and "the share of each in its success cannot be appraised."[40] Control in many cases will be the most important factor. [1235] The best objective manifestation of a shared intent, of course, is a contract saying that the parties intend to be or not to be co-authors. In the absence of a contract, the inquiry must of necessity focus on the facts. The factors articulated in this decision and the Second and Seventh Circuit decisions cannot be reduced to a rigid formula, because the creative relationships to which they apply vary too much. Different people do creative work together in different ways, and even among the same people working together the relationship may change over time as the work proceeds.
Aalmuhammed did not at any time have superintendence of the work.[41] Warner Brothers and Spike Lee controlled it. Aalmuhammed was not the person "who has actually formed the picture by putting the persons in position, and arranging the place ...."[42] Spike Lee was, so far as we can tell from the record. Aalmuhammed, like Larson's dramaturg, could make extremely helpful recommendations, but Spike Lee was not bound to accept any of them, and the work would not benefit in the slightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over the work, and absence of control is strong evidence of the absence of co-authorship.
Also, neither Aalmuhammed, nor Spike Lee, nor Warner Brothers, made any objective manifestations of an intent to be coauthors. Warner Brothers required Spike Lee to sign a "work for hire" agreement, so that even Lee would not be a co-author and co-owner with Warner Brothers. It would be illogical to conclude that Warner Brothers, while not wanting to permit Lee to own the copyright, intended to share ownership with individuals like Aalmuhammed who worked under Lee's control, especially ones who at the time had made known no claim to the role of co-author. No one, including Aalmuhammed, made any indication to anyone prior to litigation that Aalmuhammed was intended to be a co-author and co-owner.
Aalmuhammed offered no evidence that he was the "inventive or master mind" of the movie. He was the author of another less widely known documentary about Malcolm X, but was not the master of this one. What Aalmuhammed's evidence showed, and all it showed, was that, subject to Spike Lee's authority to accept them, he made very valuable contributions to the movie. That is not enough for co-authorship of a joint work.
The Constitution establishes the social policy that our construction of the statutory term "authors" carries out. The Founding Fathers gave Congress the power to give authors copyrights in order "[t]o promote the progress of Science and useful arts."[43] Progress would be retarded rather than promoted, if an author could not consult with others and adopt their useful suggestions without sacrificing sole ownership of the work. Too open a definition of author would compel authors to insulate themselves and maintain ignorance of the contributions others might make. Spike Lee could not consult a scholarly Muslim to make a movie about a religious conversion to Islam, and the arts would be the poorer for that.
The broader construction that Aalmuhammed proposes would extend joint authorship to many "overreaching contributors,"[44] like the dramaturg in Thomson, and deny sole authors "exclusive authorship status simply because another person render[ed] some form of assistance."[45] Claimjumping by research assistants, editors, and former spouses, lovers and friends would endanger authors who talked with people about what they were [1236] doing, if creative copyrightable contribution were all that authorship required.
Aalmuhammed also argues that issuance of a copyright registration certificate to him establishes a prima facie case for ownership. A prima facie case could not in any event prevent summary judgment in the presence of all the evidence rebutting his claim of ownership. "The presumptive validity of the certificate may be rebutted and defeated on summary judgment."[46] The Copyright Office stated in its response to Aalmuhammed's application for copyright (during the pendency of this litigation) that his claims "conflict with previous registration claims," and therefore the Copyright Office had "several questions" for him. One of the questions dealt with the "intent" of "other authors," i.e., Warner Brothers. The evidence discussed above establishes without genuine issue that the answers to these questions were that Warner Brothers did not intend to share ownership with Aalmuhammed.
Because the record before the district court established no genuine issue of fact as to Aalmuhammed's co-authorship of Malcolm X as a joint work, the district court correctly granted summary judgment dismissing his claims for declaratory judgment and an accounting resting on co-authorship.
B. Quantum meruit
Aalmuhammed alleged in his complaint that defendants accepted his services, knowing that they were not being provided gratuitously, yet paid him neither the fair value of his services nor even his full expenses. He wrote script material, particularly for the important Islamic religious scenes, arranged with the Egyptians in charge of the mosque for the movie to be shot inside (Aalmuhammed is a Muslim and was the only Arabic-speaking person in the production crew), taught the actors how to pray as Muslims and directed the prayer scenes, and talked to Islamic authorities after the movie was made to assure their support when it was exhibited. These services were very important. The movie would be a dark tale of hate, but for the redemptive, uplifting Islamic religious scenes.
All the services were performed in New York and in Egypt (where the Hajj scenes were shot). Aalmuhammed's fifth, sixth and seventh claims articulated this claim variously as quasicontract, quantum meruit, and unjust enrichment. These claims are different from Aalmuhammed's claim to authorship of a joint work. Even though he was not an author, it is undisputed that he made a substantial contribution to the film. It may be that the producer or director, seeing that Aalmuhammed was performing valuable and substantial services and expending substantial amounts for travel and lodging, in the apparent expectation of reimbursement, had a duty to sign him up as an employee or independent contractor, obtain his acknowledgment that he was working gratuitously or perhaps for Denzel Washington, or eject him from the set.[47] We need not decide that, because the question on review is limited to which state's statute of limitations applies.
The defendants moved to dismiss these claims for failure to state a claim under Rule 12(b)(6), on the ground that the claims were barred by California's two year statute of limitations. Aalmuhammed argued that New York's six year statute of limitations applied. The district court granted the motion to dismiss, applying California's shorter statute.
The parties agree that the district court correctly used law of the forum, California, [1237] as the source of its rule for choice of law. The applicable rule required, in this case, that "the court must apply the law of the state whose interest would be more impaired if its law were not applied."[48]
Defendants argue that only California had an interest in the application of its statute of limitations, not New York. Their theory is that the defendant corporations have their principal places of business in California, Aalmuhammed resided in neither state (he lives in Florida, though he spent the months of shooting time in New York and Egypt), and Aalmuhammed filed his lawsuit in California.
The defense argument is unpersuasive. The question is which state's interest would suffer more by the application of the other's law.[49] The strength of the interest is also a factor, however.[50] California's interest in protecting its residents from stale claims arising from work done outside the state is a weak one: "[t]he residence of the parties is not the determining factor in a choice of law analysis."[51] New York's interest in governing the remedies available to parties working in new York is far more significant.[52] New York's connection with Aalmuhammed's claim is considerably more substantial, immediate and concrete than California's. We conclude that New York would suffer more damage to its interest if California law were applied than would California if New York law were applied.
Because New York has the stronger interest and would suffer more damage than California if its law were not applied, New York's six year statute of limitations governs. The claims were brought within six years of when they accrued. We therefore vacate the dismissal of Aalmuhammed's implied contract, quantum meruit, and unjust enrichment claims and remand them for further proceedings.
C. Unfair competition
Aalmuhammed claimed that defendants passed off his scriptwriting, directing and other work as that of other persons, in violation of the Lanham Act[53] and the California statute prohibiting unfair competition.[54] The dismissal was under Rule 12(b)(6), for failure to state a claim upon which relief can be granted, so we review de novo,[55] on the basis of allegations in the complaint.[56]
We have held that, at least in some circumstances, failure to give appropriate credit for a film is "reverse palming off" actionable under the Lanham Act.[57] And we have held that "actions pursuant to California Business and Professions Code § 17200 are substantially congruent to claims made under the Lanham Act."[58] Defendants argue that not enough of Aalmuhammed's proposed script was used verbatim to amount to a violation. But this argument goes to the evidence, not the complaint, so it cannot sustain the 12(b)(6) dismissal. The complaint alleged that Aalmuhammed "substantially rewrote and expanded the dialogue for various entire [1238] scenes" and otherwise alleged extensive and substantial use of his work in the final movie. We need not determine whether Aalmuhammed established a genuine issue of fact regarding unfair competition, because the claim never got as far as summary judgment in the district court. We reverse the dismissal of these two claims.
D. Conduct abroad
The district court dismissed Aalmuhammed's claims against the Largo defendants under Rule 12(b)(6) for failure to state a claim. The dismissal was based on our decision in Subafilms, that acts of copyright infringement that occur wholly outside of the United States are not actionable under the U.S. Copyright Act.[59]
The complaint does not say whether the Largo defendants' conduct occurred outside the United States. Defendants argue that it does, by referring to them as "the film's foreign distributors." But it also says that their principal place of business is in California. These allegations leave room for proof that the conduct that the Largo defendants engaged in took place within California, even though it had consequences abroad. We cannot tell from the complaint whether foreign distributors do their work in foreign countries, or do it by fax, phone, and email from California. We therefore reverse the dismissal based on extraterritoriality of the claims against the Largo defendants.
AFFIRMED in part, REVERSED and REMANDED in part. Each party to bear its own costs.
[1] The panel unanimously finds this case suitable for decision without oral argument. See Fed. R.App. P. 34(a)(2). This dispute was originally submitted and argued on May 5, 1998 as 97-55403. However, on October 29, 1998, that appeal was dismissed for want of jurisdiction. The District Court had entered a judgment that stated "The Court may amend or amplify this order with a more specific statement of the grounds for its decision." National Distrib. Agency v. Nationwide Mutual Ins. Co., 117 F.3d 432 (9th Cir.1997), held that the identical language prevented review because "the court left open the possibility that the court might change its ruling," so no final judgment was entered. On December 10, 1998, the District Court amended its order by removing that one sentence, thus making its order final. The parties then appealed the District Court's decision again. On April 19, 1999, this court granted appellant's motion to submit the case without oral argument, to take judicial notice of the briefs and excerpts filed in 97-55403, and to allow filing of letter briefs supplementing the earlier briefs.
[2] 17 U.S.C. §§ 101, 201(a).
[3] Cf. Thomson v. Larson, 147 F.3d 195, 206 (2nd Cir.1998).
[4] See Covey v. Hollydale Mobilehome Estates, 116 F.3d 830, 834 (9th Cir.1997), amended by, 125 F.3d 1281 (1997).
[5] See 17 U.S.C. § 507(b); Zuill v. Shanahan, 80 F.3d 1366, 1371 (9th Cir.1996), cert. denied, 519 U.S. 1090, 117 S.Ct. 763, 136 L.Ed.2d 710 (1997).
[6] Zuill, 80 F.3d at 1371.
[7] 17 U.S.C. § 101.
[8] Richardson v. United States, 526 U.S. 813, 119 S.Ct. 1707, 1710, 143 L.Ed.2d 985 (1999).
[9] Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990).
[10] See Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990).
[11] 17 U.S.C. § 101.
[12] 17 U.S.C. § 101.
[13] See Richard Grenier, Capturing the Culture, 206-07 (1991).
[14] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 61, 4 S.Ct. 279, 28 L.Ed. 349 (1884).
[15] Id. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B.D. 627 (1883)).
[16] U.S. Const. Art. 1, § 8, cl. 8.
[17] Burrow-Giles, 111 U.S. at 58, 4 S.Ct. 279 (quoting Worcester).
[18] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
[19] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58, 4 S.Ct. 279, 28 L.Ed. 349 (1883).
[20] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 346, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
[21] See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349 (1884); Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
[22] Burrow-Giles, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B.D. 627 (1883)).
[23] Id. at 61, 4 S.Ct. 279.
[24] Thomson v. Larson, 147 F.3d 195, (2nd Cir. 1998); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2d Cir.1991).
[25] Thomson, 147 F.3d at 202-05.
[26] Id.
[27] Id. at 197.
[28] Id.
[29] Id. at 198.
[30] Id.
[31] Id. at 202-04.
[32] Id. at 202-24.
[33] See Thomson v. Larson, 147 F.3d 195, (2nd Cir.1998); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2nd Cir.1991).
[34] Thomson v. Larson, 147 F.3d 195 (2nd Cir.1998).
[35] Burrow-Giles v. Sarony, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B. div. 627 (1883)).
[36] Thomson, 147 F.3d at 202.
[37] Burrow-Giles v. Sarony, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B. Div. 627 (1883)).
[38] Id.
[39] Cf. Thomson v. Larson, 147 F.3d 195, 202 (2nd Cir.1998).
[40] Edward B. Marks Music Corp. v. Jerry Vogel Music Co., Inc., 140 F.2d 266, 267 (2nd Cir. 1944) (Hand, J.) modified by, 140 F.2d 268 (1944).
[41] See Burrow-Giles v. Sarony, 111 U.S. 53, 61, 4 S.Ct. 279, 28 L.Ed. 349 (1883).
[42] Id.
[43] U.S. Const. Art. 1, § 8, cl. 8.
[44] Thomson, 147 F.3d at 200 (internal quotations omitted).
[45] Id. at 202 (citing Childress v. Taylor, 945 F.2d 500, 504 (1991)).
[46] S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086 (9th Cir.1989).
[47] See 2 George E. Palmer, Law of Restitution § 10.11, at 463 (1978) ("When the plaintiff voluntarily submits an idea to the defendant which the defendant uses to his economic advantage, without any express agreement to pay the plaintiff for such use, ... the plaintiff will be able [in some circumstances] to recover the reasonable value of the use of the idea in a contract action.").
[48] Waggoner v. Snow, Becker, Kroll, Klaris & Krauss, 991 F.2d 1501, 1507 (9th Cir.1993) (citing Ledesma v. Jack Stewart Produce, Inc., 816 F.2d 482, 484 (9th Cir.1987)).
[49] Waggoner v. Snow, Becker, Kroll, Klaris & Krauss, 991 F.2d 1501, 1507 (9th Cir.1993) (citing Ledesma v. Jack Stewart Produce, Inc., 816 F.2d 482, 484 (9th Cir.1987)).
[50] Id.
[51] Id.
[52] See Rosenthal v. Fonda, 862 F.2d 1398, 1403 (9th Cir.1988).
[53] 15 U.S.C. §§ 1117, 1125.
[54] Cal. Bus. & Prof.Code § 17203.
[55] See Cohen v. Stratosphere Corp., 115 F.3d 695, 700 (9th Cir.1997).
[56] See Campanelli v. Bockrath, 100 F.3d 1476, 1479 (9th Cir.1996).
[57] Smith v. Montoro, 648 F.2d 602, 607 (9th Cir.1981); See also Lamothe v. Atlantic Recording Corp., 847 F.2d 1403, 1406-07 (9th Cir.1988).
[58] Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir.1994).
[59] See Subafilms, Ltd. v. MGM-Pathe Communications, 24 F.3d 1088, 1095-96 (9th Cir. 1994) (en banc).
3.3 South Africa Readings 3.3 South Africa Readings
3.3.1. South African Copyright Act No. 98 of 1978
3.3.2 Haupt t/a Softcopy v Brewers Marketing Intelligence (Pty) Ltd 2006 (4) SA 458 (SCA) 3.3.2 Haupt t/a Softcopy v Brewers Marketing Intelligence (Pty) Ltd 2006 (4) SA 458 (SCA)
HAUPT t/a SOFT COPY v BREWERS MARKETING INTELLIGENCE (PTY) LTD AND OTHERS 2006 (4) SA 458 (SCA)
|
Citation |
2006 (4) SA 458 (SCA) |
|
Case No |
118/05 |
|
Court |
Supreme Court of Appeal |
|
Judge |
Harms JA, Streicher JA, Mthiyane JA, Cloete JA and Lewis JA |
|
Heard |
February 15, 2006 |
|
Judgment |
March 29, 2006 |
|
Counsel |
J H Roux and S van Zyl for the appellant. |
|
Annotations |
Flynote : Sleutelwoorde
Intellectual property - Copyright - Infringement of - Computer programs - Section 2 of Copyright Act 98 of 1978 making 'computer program' as defined in s 1, including source code of programs, eligible for copyright - Respondents making use of source code of computer program, in which applicant holding copyright, to write similar computer program - Respondents marketing latter program - Applicant entitled to interdict restraining respondents from infringing copyright in computer program.
Intellectual property - Copyright - Infringement of - Computer programs - What constitutes infringement - Reproduction of substantial part of computer program - Whether substantial part of computer program being reproduced depending more on quality than on quantity of reproduction - Only 26% of graphic content and 83% of search component of computer program being reproduced, amounting to 63 lines out of several thousand lines of source code - However, such components being valuable ingredients of program - Reproduction thus constituting reproduction of substantial part of computer program - Accordingly, reproduction infringing copyright in computer program - Court interdicting continued infringement - Copyright Act 98 of 1978, s 23(1), read with ss 11B and 1(2A).
Intellectual property - Copyright - Ownership of - Copyright in computer program - Authorship - What constitutes - Author of computer program person who exercises control over making of computer program - Copyright Act 98 of 1978, s 1 sv 'author'.
Intellectual property - Copyright - Ownership of - Copyright in computer program - Authorship - What constitutes - Computer program developed in course of author's employment - Person may be author of program by virtue of his control over making thereof even if creator of program independent contractor - Degree of control decisive - Copyright Act 98 of 1978, s 1 sv 'author', read with s 21(1)(b).
Intellectual property - Copyright - Subsistence of - In computer program - Sufficient that program brings about result - Irrelevant whether result correct or incorrect - Copyright Act 98 of 1978, s 1 sv 'computer program'.
Intellectual property - Copyright - Subsistence of - Improvements or refinements to original work - Qualifying for copyright protection, even where it infringes original work, if original work qualifying for copyright and improvement and/or refinement original and substantial - Copyright Act 98 of 1978, s 2(3).
Intellectual property - Copyright - Subsistence of - In computer program - Originality - What constitutes - Creativity not requirement for originality - Work original where not copied from existing source and production of work requiring substantial degree of skill, judgment or labour - Copyright Act 98 of 1978, ss 2(1)(i) read with s 1 sv 'computer program'.
Intellectual property - Copyright - Subsistence of - In computer program - What constitutes 'computer program' - Databases and database structures constituting 'literary works' rather than 'computer programs' - Copyright Act 98 of 1978 svv 'computer program' and 'literary work'.
Intellectual property - Copyright - Subsistence of - In literary work - Computer-generated literary work - Work computer-generated if created by computer without there being human author of work - 'Computer-generated' and 'computer-assisted' distinguished - Creation of structures for databases and databases themselves being 'computer-assisted' - Bare databases thus not qualifying as 'computer-generated' 'literary works' - Copyright Act 98 of 1978 svv 'computer program' and 'literary work'.
Practice - Applications and motions - Referral to trial - Trial Judge to insist on proper definition of issues in terms of Rule 6(5)(g) of Uniform Rules of Court - Referral to trial invariably calling for definition of issues, in terms of Rule 6(5)(g), in order to save time, energy and costs - Where matter referred without defining issues, trial Judge to insist on proper definition of issues when matter allocated to him.
Headnote : Kopnota
The appellant applied unsuccessfully in the High Court for an order interdicting the respondents, in terms of the provisions of the Copyright Act 98 of 1978, from infringing his alleged copyright in three computer programs, namely a Data Explorer program, a converter program and a tree-preparer program, and in certain tables (or database structures) and databases. It appeared from the evidence that the third respondent had written the Data Explorer program, which included a questions database or table filled in by the appellant, with the assistance of a computer program, for a company of which the second respondent had been a director and which had employed the appellant. After the appellant left the employ of the company on 31 July 1998 the third respondent continued to develop the program for the appellant exclusively, whereupon he developed the tree-preparer program, the converter program and various other databases. It then transpired that the third respondent assisted in the writing of a computer program similar to the Data Explorer program for the first respondent by providing, inter alia, portions of the source code of the Data Explorer program. The first respondent duly marketed its program and, upon discovering the existence of the first respondent's program, the appellant launched the present application. On the day of the hearing of the application, the matter was, by consent, postponed for trial without definition of the issues in terms of Rule 6(5)(g) of the Uniform Rules of Court. In dismissing the application, the trial Court did not distinguish between the computer programs and the databases. It found that: (1) the appellant was not the author of the Data Explorer program, as he had merely effected improvements to the program and, consequently, had not acquired copyright in the program; (2) it was not the appellant's contention that he had acquired copyright in any of the improvements to the program, but only that he had copyright in the original program; (3) the appellant was, at best, a co-author of the converter program. On appeal, the appellant contended, inter alia, that the Data Explorer was not a 'computer program', as it sometimes generated incorrect results.
Held, that in the present matter it was essential, as would be the case in most applications that were referred to trial, that the issues be defined. Had that been done in the present matter, a lot of time, energy and costs would have been saved. Although the order referring the matter to trial was not an order of the trial Judge, when the matter was allocated to him, he ought to have insisted on a proper definition of the issues. (Paragraph [19] at 468J - 469B.)
Held, further, that the contention that the Data Explorer program was not a 'computer program' because it sometimes generated incorrect results was not correct, since the definition of 'computer program' in s 1 of the Act did not require that the program generate correct results. It required merely that it 'bring about a result'. As at 31 July 1998 the Data Explorer program did 'bring about a result', sometimes correct and sometimes incorrect, and it therefore did qualify as a 'computer program' eligible for copyright. (Paragraph [23] at 470B - D.)
Held, further, that the trial Court had erred in finding that the appellant lacked copyright in the Data Explorer program, since he had merely effected improvements to the program. If a work were eligible for copyright, an improvement or refinement of that work would, similarly, be eligible for copyright, even if the improved work involved an infringement of the copyright in the original work, as long as the improvement was original and substantial. (Paragraph [24] at 470E - F.)
Held, further, that the trial Court had also erred in finding that the appellant had not claimed copyright in the 'improvements', as he had in respect of the databases. (Paragraph [25] at 470H - 471A.)
Held, further, as to the nature of the works, that the database structures were 'literary works' for purposes of the Act because they consisted of tables. (Paragraph [30] at 471H.)
Held, further, that a literary work was 'computer-generated' if it were created by a computer in circumstances where there is no human author of the work. If there were a human author, the work was 'computer-assisted' and not 'computer-generated'. (Paragraph [31] at 471I.)
Held, further, that the structures for the various databases and the databases themselves were created by the third respondent. Although he made use of a computer program to do so, they were not generated by a computer: the computer merely assisted him in creating them. The bare databases, therefore, did not qualify as 'computer-generated' literary works. (Paragraphs [32] - [34] at 472B - F.)
Held, further, as to the requirement of originality, that creativity was not required in order to make a work original. A work was considered to be original if it had not been copied from an existing source and if its production required a substantial degree of skill, judgment or labour. (Paragraph [35] at 473A - B.)
Held, further, that the converter program and the tree-preparer program were both products of substantial skill, judgment and labour. (Paragraph [36] at 473D.)
Held, further, as to the requirement of authorship, that the 'author' of a computer program was the person who exercised control over the making of the program. (Paragraph [38] at 474B/C.)
Held, further, that the databases and database structures were 'literary works' which had not been made or created by the appellant. The appellant was therefore not the 'author' of and did not own the copyright in those works. The questions compilations, on the other hand, were created by the appellant and, assuming them to be original, he was the 'author' of them and acquired the copyright in them. (Paragraph [39] at 474D.)
Held, further, that the Act drew a distinction between 'control' in the definition of 'author' in respect of a computer program, and 'control' by virtue of a contract of employment (compare s 1 sv 'author' to s 21(1)(b)). 'Control' in the definition must therefore have been intended to have a wider meaning than 'control' in the employment situation, that is, a person could because of his control over the making of a computer program be the author of that program even if the creator was an independent contractor. (Paragraph [41] at 474F - H.)
Held, further, that the appellant had exercised control over the development of the Data Explorer program after 31 July 1998. Consequently, he was the author of the program even though the third respondent had created it. It followed that the copyright in the Data Explorer program, which included the copyright in the converter and tree-preparer programs, vested in the appellant. (Paragraphs [41] - [42] at 475C - D.)
Held, further, as to whether the respondents had infringed the appellant's copyright, that under s 11B read with s 1(2A) of the Act, the copyright in a computer program was infringed by, inter alia, reproduction of a substantial part of the work. (Paragraph [44] at 475G.)
Held, further, that whether a substantial part of a work had been reproduced depended more on the quality than on the quantity of what had been taken. In the present case, although only 26% of the graphic component and 83% of the search component had been copied, amounting to 63 lines out of several thousand lines of source code, they were valuable ingredients of the program. The copying therefore constituted the reproduction of a substantial part of the Data Explorer program and it followed that the respondents had infringed the appellant's copyright in the Data Explorer program. (Paragraph [45] at 475I - 476B.)
Held, accordingly, on the evidence, that the respondents had not done any act that might have constituted infringement of the appellant's copyright in the converter program or the tree-converter program, or in the questions compilations. (Paragraphs [47] - [48] at 476E - G.)
2006 (4) SA p462
Held, accordingly, that the appeal had to be upheld, and the order of the trial Court set aside and replaced with an order interdicting the respondents from infringing the appellant's copyright in the Data Explorer program. (Paragraph [51] at 477C.)
The decision in the Cape Provincial Division in Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others2005 (1) SA 398 (C) reversed.
Cases Considered
Annotations
Reported cases
Southern African cases
Attorney-General, Eastern Cape v Blom and Others1988 (4) SA 645 (A): dictum at 670D - F applied
Biotech Laboratories (Pty) Ltd v Beecham Group plc and Another2002 (4) SA 249 (SCA): dictum in para [9] applied
Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others2005 (1) SA 398 (C): reversed on appeal
Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd1998 (2) SA 965 (SCA): referred to
Klep Valves (Pty) Ltd v Saunders Valve Co Ltd1987 (2) SA 1 (A): referred to
Morton-Norwich Products Inc and Others v Intercen Ltd [1978] RPC 501: compared
Payen Components SA Ltd v Bovic CC and Others1995 (4) SA 441 (A): applied
Waylite Diary CC v First National Bank Ltd1995 (1) SA 645 (A): referred to.
Foreign cases
Autospin (Oil Seals) Ltd v Beehive Spinning (a firm) [1995] RPC 683 (Ch): followed
CCH Canadian Ltd v Law Society of Upper Canada [2004] 1 SCR 339 (2004 SCC 13 (Canlii)): applied
Feist Publications Inc v Rural Telephone Service Co Inc 449 US 340 (1991): dicta at 345 and 348 applied
Interlego AG v Tyco Industries Inc [1989] AC 217 (PC): dictum at 263 applied
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 (HL): applied.
Statutes Considered
Statutes
The Copyright Act 98 of 1978, ss 1, 1(2A), 2, 11B, 21(1)(b) and 23(1): see Juta's Statutes of South Africa 2004/5 vol 2 at 2-211, 2-214 and 2-219.
Rules Considered
Rules of Court
The Uniform Rules of Court, Rule 6(5)(g): see The Supreme Court Act and the Magistrates' Courts Act and Rules (Juta, 2006) at 36.
Case Information
Appeal from the decision in Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others2005 (1) SA 398 (C). The facts appear from the reasons for judgment.
J H Roux and S van Zyl for the appellant.
R A J Acton for the respondents.
In addition to the authorities cited in the judgment of the Court, counsel for the respondent referred to the following:
2006 (4) SA p463
Econostat (Pty) Ltd v Burkhard Karl Hans Lambrecht and Another 89 JOC (W) at 105E - G
Feist Publications Inc v Rural Telephone Service Co 499 US 340 (1991)
Flyde Microsystems Ltd v Key Radio Systems Ltd [1998] EWHC Patents 340 (11 February 1998)
FSS Travel & Leisure Systems Ltd v Philip Anthony Johnson and Chauntry Corporation Ltd [1997] EWCA Civ B 2759 (19 November 1997)
G A Fichardt Ltd v The Friend Newspapers Ltd 1916 AD 1 at 6
Golden China TV Game Centre and Others v Nintendo Co Ltd1997 (1) SA 405 (A) at 413A
IS Innovative Software v Robert Howes [2004] EWCA Civ 275
Lacfin (Pty) Ltd v Le Roux 769 JOC (O) at 778
Laubscher v Vos and Others 3 JOC (W)
Logistic Technologies (Pty) Ltd v Coetzee and Others1998 (3) SA 1071 (W) at 1075 - 6
Marais v Bezuidenhout1999 (3) SA 988 (W)
Memory Institute SA CC t/a SA Memory Institute v Hansen and Others2004 (2) SA 630 (SCA)
Nintendo Co Ltd v Golden China TV Game Centre and Others1995 (1) SA 229 (T) at 243B - C
Premier Hangers CC v Polyoak (Pty) Ltd1997 (1) SA 416 (A) at 424F - I
Prism Holdings Ltd and Another v Liversage and Others2004 (2) SA 478 (W) at 486A - B
R v Dhlumayo and Another1948 (2) SA 677 (A)
S v Kelly1980 (3) SA 301 (A) at 308E - G
Schultz v Butt1986 (3) SA 667 (A) at 678H - 679A, 681A - B
Sun World International Inc v Unifruco Ltd1998 (3) SA 151 (C)
The Concept Factory v Heyl1994 (2) SA 105 (T)
Townsend Productions (Pty) Ltd v Leech and Others2001 (4) SA 33 (C) at 55E - F
Universal Storage Systems (Pty) Ltd v Crafford and Others2001 (4) SA 249 (W) at 251
Wackrill v Sandton International Removals (Pty) Ltd and Others1984 (1) SA 282 (W)
Waste Products Utilisation (Pty) Ltd v Wilkes and Another2003 (2) SA 515 (W) at 573F - I
Western Cape Education Department and Another v George1998 (3) SA 77 (SCA) at 84G.
Neethling 'Requirements for the Protection of Confidential Trade Information or Trade Secrets' 2003 (120) SALJ at 472
Van der Merwe Computers and the Law 2 ed (2000) at 31 - 6, 56.
Cur adv vult.
Postea (March 29)
Judgment
Streicher JA:
[1] Anton Haupt, the appellant, applied to the Cape High Court for an order interdicting the respondents in terms of the Copyright Act 98 of 1978 from infringing his alleged copyright in a computer program known as Data Explorer, and also in certain tables (or database structures) and databases. The High Court held that Haupt's claim could not be sustained and dismissed the application. With the leave of this Court, Haupt now appeals against the High Court's judgment.
[2] Haupt and the second respondent, Christopher Brewer, are brothers-in-law. Brewer used to be the managing director and Haupt the marketing director of Brewer's Almanac (Pty) Ltd (Brewer's Almanac). Brewer's Almanac did business as an advertising agency and also disseminated information of use to the advertising industry.
[3] During 1998 the third respondent, Coetzee, was requested by Brewer's Almanac to write a computer program which could interrogate and manipulate what is known as AMPS (All Media Products Survey) data. AMPS data are research results produced by a media research company on behalf of the South African Advertising Research Foundation. AMPS data are based on market surveys done on a six-monthly basis by way of questionnaires and are available in binary-column electronic format stored in a UFL file and captured on a compact disc. They enable one to determine, inter alia, whom the readers, listeners or viewers of particular newspapers, magazines, radio stations or television programs are, and who the users of various products are. The information is useful, especially to advertising agencies, in the planning of marketing strategies.
[4] Coetzee was requested to write a program that would give the user the ability to select certain questions, extract the answers from the UFL file and display those answers in a meaningful way. He used a computer program called Delphi to write the program which he called Project AMPS. To enable the selection of a question, the questions upon which the AMPS data were based had to be stored in a database. For this purpose Coetzee created a table. This was done by simply asking the Delphi program to create a new table. The program allows one to determine the number of fields required and the extent of the fields. Haupt then undertook the task of filling the table with the questions contained in the questionnaire in respect of the AMPS97b data. Coetzee, in the meantime, wrote a program that could read the data in the binary format supplied. The next step was to create the user interface or front end of the program, that is, that part of the program that determines what a user will see. Coetzee decided that the questions should be displayed in a 'tree' format and used the tree component of the Delphi program for this purpose. He then proceeded to write a program that could read the questions in the table (the questions database), populate the tree when the program was activated, allow the user to select a question, and extract, calculate and display the data requested. By 21 June 1998 the program had developed to the extent that a tree could be populated from a questions database, a user could select one of the questions, and an answer, sometimes correct, sometimes wrong, could be extracted from the UFL file and be displayed on a monitor.
[5] On 31 July 1998 Haupt and Brewer parted ways and, from that date onwards, Haupt was no longer in the employ of Brewer's Almanac. Thereafter, Coetzee, in terms of a prior arrangement with Haupt, continued to develop the program for Haupt exclusively. In terms of the arrangement Coetzee was to receive 20% of the gross sales of the program.
[6] The next major development of the program after 21 June 1998 was the incorporation of a 'tree-preparer' program. Every time the program was loaded, it took time to populate the tree from the questions database. To overcome this problem Coetzee wrote a program called the tree-preparer program which could, from the questions database, prepare a tree populated in the format required and then save it in a tree.txt file. He took out the link to the questions database and, thereafter, the tree.txt file, instead of the questions database, was used to populate the tree. Haupt testified that this development took place after 31 July 1998. His evidence in this regard was not disputed. However, when Coetzee testified, he suggested that the development might have taken place before 31 July 1998. According to him, he established that he started working on a tree-preparer program on 5 or 6 July 1998. He could not say when he completed the writing of the program, but could say that it would have taken him about six hours to do so. In my view, Coetzee's belated and half-hearted suggestion that the program might have been written before 31 July 1998 is not sufficient to cast doubt on Haupt's evidence in this regard. Coetzee also wrote a program which could search the tree view of the questions. It was not suggested that this was done before 31 July 1998.
[7] The data in the UFL file was not sorted and, every time a question was selected, a search had to be done through the whole of the file. Quick access could, therefore, not be gained to a particular sector of the data. To overcome this problem Coetzee created an answers database and changed the existing program so as to pre-sort the answers contained in the UFL file, and to order and index them in a table or database structure created as in the case of the questions database structure. Once this had been done the program had to be changed again so as to look for an answer to a selected question in the answers database, instead of the UFL file. This procedure had to be followed in respect of each set of AMPS data as it became available. The development took place at the beginning of 1999. At that time Coetzee also created a weightings database. This was necessary because respondents to the questionnaires have a weighting which is used to determine their actual representation in the relevant population. Subsequently, various other database structures were added to the Data Explorer program.
[8] Every six months, when new data was received, the Data Explorer program had to be changed from reading the answers file to reading the UFL file and, once this had been done, it had to be changed back again. To obviate these changes, Coetzee, in June 2000, created a new program (the converter program), separate from the Data Explorer program, to do the conversion from the UFL file to the answers file. Coetzee described the effect of the development as follows:
'So that meant that I could leave the Project AMPS program pristine, every time a conversion came I could just do my conversion with a separate program and finished, I didn't have to remember what I'd changed and all that kind of stuff.'
He referred to the program as the Project AMPS program, although, by that time, the name of the program had been changed to Data Explorer.
[9] Coetzee left for the USA in October 2000. Before he did so, he worked full time for a period of two months on the further development of the program. During this period Haupt paid him R20 000 per month. It was at this time that a new graphing tool was added to the program. This was done by purchasing a graphic server which was commercially available and by incorporating it into the Data Explorer program.
[10] The AMPS data, referred to as Teen98, Child99, AMPS99a, AMPS99b and AMPS2000a, were all processed by Haupt and Coetzee and marketed by Haupt, together with the Data Explorer program. In respect of each set of data, a tree.txt file was compiled by the tree-preparer program from the questions table filled by Haupt, and the data contained in a UFL file was converted to an answers database and a weightings database.
[11] On 26 March 2001 Coetzee, who, at that time, was still in the USA, made contact with Brewer by e-mail, stating, inter alia, that he had heard little or nothing from Haupt. This led to the following letter from Brewer to Coetzee on 4 May 2001:
'Dear Byron,
. . .
There's something I'd like to discuss with you - but it must be kept strictly confidential and just between you and me - for obvious reasons.
I have been asked by several agencies to get busy on other database products, some of which would be impractical, but, more recently, SAARF asked me if I would be able to produce a ''Brewers AMPS Data Program''.
Let me say, straight off, that I have absolutely no intention of developing a program for this - but I would be interested in coming to an arrangement with you where we would use the program you wrote to convert the SAARF data (we would then develop the front-end to make it look nice as well as looking like our other products).
I . . . also believe there is room for another player in the market (Anton is obviously doing exceptionally well - in fact, he seems positively rich) and you, yourself, would not be compromised. I'll make that a little clearer if I can:
I need to use the program you wrote in order to import SAARF (AMPS) data into a Brewer's database (which Hank will write). For this you will earn a ''royalty'' or ''commission'' on sales.
. . .
So here's my question to you:
Are you interested in allowing me to use your program for converting SAARF (AMPS) data into a database (which we will write) in return for a royalty?
. . .
Whichever is the answer, please do not discuss this with Anton. There is nothing devious in my saying that - it's just that I don't want to create any family stress or tension (especially if your answer is ''no'').
There is no other reason for me not wanting Anton to know.
If we do go ahead, then (if necessary) I'll explain it all directly to him. There is absolutely nothing underhand about you and I discussing this. . . .'
[12] Negotiations between Coetzee and Brewer ensued, culminating in a written agreement on 2 July 2001. In terms of the agreement, they agreed that Brewer's Marketing Intelligence (Pty) Ltd, the first respondent, would develop the program, that Coetzee would provide compiled (converted) data to the first respondent to enable the first respondent to develop the program, and that Coetzee would co-operate and advise the first respondent during the development stage.
[13] The first respondent employed one Hank Bento to write the program which became known as the Brewer's AMPS program. While doing so Bento was in frequent contact with Coetzee for assistance. Coetzee regularly gave advice to Bento and, from time to time, sent him portions of the source code of the Data Explorer program. The source code for the search function and also the source code required to incorporate the graphics server were so sent to Bento. In both instances this was done because Bento struggled to do the programing. Referring to an e-mail in terms of which he sent the code in respect of the graphics server to Bento, Coetzee testified:
'What has happened here is Mr Bento has installed the graphing package, he's never seen it before, and he's tinkered with it a bit and he's realised that there's a lot more to this than just simply installing it, he now has to write code around it in order to use it, so he has contacted me, I'm not sure how, either with MSN or by e-mail, and said, listen, Byron, how did you use this, what, can you shortcut me on this, please, and so I said, I sent him an e-mail with the exact code that is in Project AMPS that I wrote around using the graphic server previously, and it's about just over two pages long, the code.'
Bento conceded that he made use of these source codes.
[14] At that time the latest AMPS data, namely, AMPS2000b, had not been converted by Coetzee for Haupt. The first respondent acquired these data, Brewer filled a questions table with the questions in respect of the AMPS2000a data, sent the data (contained in a UFL file stored on a compact disc) together with the questions database so created to Coetzee, and Coetzee converted the data from the UFL file to an answers and weightings database. Coetzee, by using the tree-preparer program, also created a tree.txt file and returned the conversions and the tree.txt file to the first respondent. In addition, Coetzee supplied the Teen98, Child99, AMPS99a, AMPS99b and AMPS2000a databases which had previously been created for the Data Explorer program, as well as the relevant tree.txt files, to the first respondent.
[15] The first respondent marketed the Brewer's AMPS program together with all the aforesaid converted data and the tree.txt files. The existence of the program was discovered by Haupt when he investigated why his Data Explorer program, which was being used by Nasionale Pers, was not functioning properly. He established that the Malfunctioning was caused by the presence of a similar program, namely, the Brewer's AMPS program.
[16] Haupt thereupon applied for an Anton Piller order and for an order interdicting the respondents from infringing his copyright in the Data Explorer program and various files and folders, including the aforesaid databases. By this time Coetzee had returned to South Africa. The order was granted and the respondents were called upon to show cause why an interdict should not be granted against them.
[17] On 29 May 2002 the interim interdict against the respondents was discharged and, by consent, the following order was made in respect of the application for an interdict:
'3. The final interdict prayed for by the applicant is to be dealt with as follows:
3.1 Determination of the final interdict is referred to trial on 4 November 2002.
3.2 The applicant is ordered to deliver his supplementary replying affidavits if any by no later than Thursday 20 June 2002.
3.3 It is ordered that the affidavits, filed and to be filed, in the present matter are to stand as pleadings.
3.4 The Uniform Rules of Court pertaining to trial actions are to apply to the present matter.
4. Costs are to stand over for later determination.'
[18] This order should never have been made. The affidavits, together with the annexures, comprised 330 pages in which the issues were not properly defined. The problem could have been alleviated had the parties held a pre-trial conference as required by para 3.4 of the order, but that was not done either. As a result, the parties plunged into a trial without a proper appreciation of what the issues were. The trial commenced on 26 February 2003 and the respondents closed their case on 24 February 2004, after a number of postponements. No less than 33 Court days were taken up. A lot of time and energy were spent at the trial on the question as to the shareholding in Brewer's Almanac and on the question as to whether the relationship between Haupt and Brewer, while they were employees of the company, was similar to the relationship between partners. It has now been conceded by all the parties concerned that those disputes were irrelevant. An inordinate amount of time was also spent on the question whether it was Brewer or Haupt who first had the idea to write the program, and as to the relative contributions of Brewer and Haupt to the writing of the Project AMPS program. Again, these issues were irrelevant, as it is common cause that Haupt and Brewer were acting in their capacities as employees of Brewer's Almanac. The parties got so entangled in irrelevant issues that the real issues, such as the nature of the works in respect of which copyright was being claimed, whether the works were original and who the author for purposes of the Act was, received scant attention.
[19] In terms of Uniform Rule 6(5)(g), a Court may, where an application cannot properly be decided on affidavit, refer the matter to trial with appropriate directions as to pleadings or definition of issues, or otherwise. In this case, as would be the case in most applications that are referred to trial, it was essential that the issues be defined.1 Had it been done, a lot of time, energy and costs could have been saved. The order referring the matter to trial was not made by the trial Judge. However, when the matter was allocated to him, he should have insisted on a proper definition of the issues.
[20] The evidence adduced at the trial established that nine out of ten database structures used in the Brewer's AMPS application were identical with database structures used in the Data Explorer application; that the answers and weightings databases used in the Data Explorer application were supplied to clients who used the Brewer's AMPS program; that the tree.txt files in respect of the Teen98, Child99, AMPS99a, AMPS99b and AMPS2000a data used in the Brewer's AMPS application corresponded 99%, 100%, 57%, 96% and 96%, respectively, with the corresponding tree.txt files used in the Data Explorer application; that the source code of the tree-preparer and converter programs used by Coetzee for the Brewer's AMPS program corresponded 93% and 84%, respectively, with the tree-preparer and converter programs used by him in respect of the Data Explorer program; and that the source code in respect of the search and graphing functions in the Brewer's AMPS program corresponded 83% and 26%, respectively, with the source codes in relation to these functions in the Data Explorer program.
[21] The High Court did not distinguish between the computer programs and the databases. It held that Brewer's Almanac was the author of the Project AMPS program, in that the company in general had overriding control of the creation of the program. In regard to the developments of the program post-31 July 1998, the High Court said that it was apparent that they were improvements and refinements of the existing Project AMPS program. It held that, by expending time and effort on the improvement of the program, Haupt did not, in some way, become the holder of the copyright. According to the High Court, it was not Haupt's case that one (or more) of the developments that occurred after 31 July 1998, of which he was the author, satisfied the originality requirement of the Act and attracted copyright in its own right. In respect of the converter program, the High Court held that, at best for Haupt, he could claim to be the co-author with Coetzee in respect of the changes that were made after July 1998. For these reasons, the High Court dismissed Haupt's application.
[22] Haupt contends that the High Court erred and that he was entitled to an order interdicting the respondents from infringing his copyright in:
(a) The Data Explorer program, including the search instructions, the graph instructions, the converter program and the tree-preparer program.
(b) Various structures of databases, such as the questions.db, the answers.db and the weightings.db.
(c) The questions, answers, weightings and tree.txt compilations in respect of the Teen98, Child99, Amps99a, Amps99b and Amps2000a data.
[23] Haupt submitted that the High Court erred in finding that the Project AMPS program, as it existed on 31 July 1998, constituted a computer program eligible for copyright in terms of the Act. He submitted that this was the case because it produced incorrect results and because 'sections of the raw data' could not be read at all. I do not agree. A computer program is defined in s 1 of the Act as 'a set of instructions fixed or stored in any manner and which, when used directly or indirectly in a computer, directs its operation to bring about a result'. It does not require the result to be correct. As at 31 July 1998, the Project AMPS program did bring about a result, sometimes correct, sometimes wrong. It did, therefore, qualify as a computer program eligible for copyright.
[24] The High Court was apparently of the view that Haupt could not acquire copyright in the Data Explorer program, inasmuch as the program was an improvement and refinement of the Project AMPS program. It erred in this regard. If a work is eligible for copyright, an improvement or refinement of that work would similarly be eligible for copyright, even if the improved work involved an infringement of copyright in the original work, if it satisfies the requirement of originality.2 That will be the case only if the improvement or refinement is not superficial. The alteration to the original work must be substantial.3 See, in this regard, Interlego AG v Tyco Industries Inc [1989] AC 217 (PC) at 263, where the Privy Council said in respect of an alteration to an artistic work:
'There must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work. Of course, even a relatively small alteration or addition quantitatively may, if material, suffice to convert that which is substantially copied from an earlier work into an original work. Whether it does so or not is a question of degree having regard to the quality rather than the quantity of the addition. But copying, per se, however much skill or labour may be devoted to the process, cannot make an original work.'
[25] The High Court also erred in holding that it was not Haupt's case that one or more of the developments after 31 July 1998 satisfied the originality requirement of the Act and attracted copyright in its own right. Haupt specifically claimed copyright in respect of the various databases. He may have approached the case on the basis that the converter and tree-preparer programs were part and parcel of the Data Explorer program, but the question as to whether he was entitled to copyright in respect of these programs was canvassed to no lesser extent than in respect of the other components of the relevant software.
[26] In terms of s 2(1) of the Act, literary works and computer programs are works that are eligible for copyright if they are original. Other works that are eligible for copyright are not presently relevant.
[27] Subject to certain qualifications, copyright is, in terms of s 3 of the Act, conferred on the author of a work eligible for copyright. In s 1 of the Act, 'author' is differently defined in respect of literary works, computer programs, and literary works or computer programs which are computer-generated. It follows that, in order to determine in whom the copyright in respect of the various works vested, it is necessary to first determine whether the works we are concerned with are literary works, computer programs, computer-generated literary works or computer-generated computer programs, and then to determine whether they are original and whom the author of the relevant work is.
The nature of the works
[28] As stated above, a 'computer program' means a set of instructions fixed or stored in any manner and which, when used directly or indirectly in a computer, directs its operation to bring about a result (s 1 of the Act). It is common cause that the Data Explorer program (including the search instructions and the graph instructions) and also the converter program and the tree-preparer program are computer programs. All of them consist of a code containing a set of instructions which, when used in a computer, directs its operation to bring about a result.
[29] A literary work includes, irrespective of literary quality and in whatever mode or form expressed, tables and compilations, including tables and compilations of data stored or embodied in a computer or a medium used in conjunction with a computer, but not a computer program (s 1 of the Act).
[30] In respect of the database structures, Haupt contended that they were computer programs, while the respondents contended that they were literary works. According to the evidence adduced at the trial, a database structure does not consist of a set of instructions. It consists of a table with a certain number of columns which may vary in width. The database structures are therefore literary works for purposes of the Act.
[31] The Act does not contain a definition of 'computer-generated'. In my view, a work qualifies as having been computer-generated only if it was created by a computer in circumstances where there is no human author of the work. If there is a human author, the work is computer- assisted and not computer-generated. That is the meaning ascribed to 'computer-generated' in s 178 of the Copyright, Designs and Patents Act, 1988, of the United Kingdom. It also accords with the recommendation of the Australian Copyright Law Review Committee in respect of computer software protection.4 That is also the meaning ascribed to 'computer-generated' in Payen Components SA Ltd v Bovic CC and Others1995 (4) SA 441 (A) at 450D - G, although the Court was not dealing with the meaning of 'computer-generated' in the context of the Act.
[32] The structures for the various databases were created by Coetzee. Although he made use of the computer program Delphi to do so, they were not generated by a computer: the computer merely assisted him in creating them. It is he who decided on the number of columns, their width and the field names. The creation of such a table is no different from the creation of a document by utilising a word processor. In such a case the computer is used as a tool.5 The bare databases so created, therefore, did not qualify as computer-generated literary works.
[33] In the case of the answers, weightings and tree.txt databases, it does not make sense to separate the structures of the databases from the compilations.6 The databases were created by Coetzee as a composite unit and their structures were significant parts of such units. They determined how the data was to be ordered in order to be utilised by the Data Explorer program. In the circumstances, the answers, weightings and tree.txt databases were created by Coetzee with the assistance of the converter and tree-preparer programs, ie they were not computer-generated.
[34] The position is different in the case of the questions database. The structure of the database was created by Coetzee and the compilation of the questions within that structure was done by Haupt. They were literary works by definition, and were not computer-generated.
Originality
[35] There is no definition of 'original' in the Act. That the work must originate from the author and not be copied from an existing source is clear, but that is not to say that every work which is not copied would qualify for protection in terms of the Act. In this regard, the High Court would seem to have accepted, and the respondents submitted, that a 'minimal degree of creativity' was required to satisfy the originality requirement. They relied on the judgment of the Supreme Court of the USA in Feist Publications Inc v Rural Telephone Service Co Inc 449 US 340 (1991) at 345 and 348. However, the originality requirement in the Act was also a requirement in the Copyright Act 63 of 1965, which was repealed by it, and there is no reason to believe that it was intended to have a meaning different from the meaning it had in the repealed Act. The repealed Act was based on the Copyright Act of 1956 of the United Kingdom which had a similar originality requirement. For this reason, 'original' in the repealed Act was probably intended to have the meaning it had been held to have in the United Kingdom. There, creativity is not required to make a work original. Save where specifically provided otherwise, a work is considered to be original if it has not been copied from an existing source and if its production required a substantial (or not trivial) degree of skill, judgment or labour.7 In Canada 'original' has likewise been interpreted so as not to require creativity. In CCH Canadian Ltd v Law Society of Upper Canada8 it was held:
'(A)n original work must be the product of an author's exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. While creative works will by definition be ''original'' and covered by copyright, creativity is not required to make a work ''original''.'9
[36] There can be no question that the converter program and the tree-preparer program were the products of substantial skill, judgment and labour. It took Coetzee about six months to get the converter program right, while the writing of the source code of the tree-preparer program would have taken him about six hours. The fact that Bento could not himself create a similar tree-preparer program, but had to rely on Coetzee's assistance, is in itself an indication that the writing of the program required substantial skill, judgment and labour. There can also be no doubt that the writing of the source code for the search and the graph instructions required substantial skill, judgment and labour. They were made available to the first respondent because Bento was struggling to write the code. That the incorporation of these functions into the Data Explorer program brought about a significant improvement is evidenced by the fact that both Haupt and the respondents considered it necessary that these functions be incorporated into programs such as the Data Explorer and Brewer's AMPS programs.
[37] It is, in the light of what follows, not necessary to decide whether the databases, database structure and questions compilations were 'original'. I shall, therefore, merely assume that they were original.
Author
[38] As stated above, 'author' is differently defined, depending on the work that is eligible for copyright. In the case of a literary work 'author' means the person who first makes or creates the work; in the case of a computer program 'author' means the person who exercises control over the making of the computer program; and, in the case of any of these works having been computer-generated, 'author' means the person by whom the arrangements necessary for the creation of the work were undertaken.
[39] The databases and database structures are literary works which were not made or created by Haupt. Haupt, therefore, does not own the copyright in these works. He was entitled to use them because of a tacit licence from Coetzee. The questions compilations, on the other hand, were created by Haupt and, on the assumption that they were original, he acquired the copyright in them.
[40] The High Court held that Brewer's Almanac exercised control over the making of the Project AMPS program, but did not consider the question of control in respect of the developments to that program after 31 July 1998. Had it done so, its reasoning would have led it to conclude that Haupt controlled the making of the program after 31 July 1998. That is so because, on the evidence, the relationship between Haupt and Coetzee was the same as the relationship between Brewer's Almanac and Coetzee in respect of the making of the program.
[41] In s 21 of the Act specific provision is made in respect of works made in the course of an author's employment by another person. A distinction is thus drawn in the Act between 'control' in the definition of 'author' in respect of a computer program, and 'control' by virtue of a contract of employment. 'Control' in the definition must therefore have been intended to have a wider meaning than 'control' in the employment situation, that is, a person may, because of his control over the making of a computer program, be the author of that program even if the creator of the program is an independent contractor.10 According to The Shorter Oxford English Dictionary 'to control' means 'to exercise restraint or direction upon the free action of' and 'control' means 'the fact of controlling, or of checking and directing action'. In this case Haupt instructed Coetzee as to the end result that was to be achieved, Coetzee then did the technical work required to achieve that end result and, from time to time, effected improvements. However, Coetzee was, all along, in constant contact with Haupt and he accepted and executed detailed instructions from Haupt. As he progressed, he submitted his work to Haupt for it to be checked and approved by him. In the properties section of the Data Explorer program, Coetzee indicated that the copyright was owned by Soft Copy, the name under which Haupt was trading. The allegation by Haupt in his founding affidavit that it was always agreed between the parties that Haupt was the owner of the program was not disputed. This being the understanding between the parties, Haupt could, at any time, direct in which direction the development of the program should proceed, or could terminate further development if he wished to do so. Haupt was, therefore, in a position of authority over Coetzee insofar as the development of the program was concerned. He was in command and Coetzee subjected himself to such command. It is true that Haupt was in no position to instruct Coetzee as to how, technically, to achieve his requirements, but I agree with the High Court that one does not need to be a computer programr to be able to control the writing of a computer program. For these reasons I am of the view that Haupt controlled the writing of the computer programs written after 31 July 1998.
[42] It follows that the copyright in the Data Explorer program, which included the search instructions and the graph instructions, and also the copyright in the converter and the tree-preparer programs, vested in Haupt.
Infringement
[43] The respondents contended that, in the event of its being held that the copyright vested in Haupt, they did not infringe such copyright. Section 23(1) provides as follows:
'Copyright shall be infringed by any person, not being the owner of the copyright, who, without the licence of such owner, does or causes any other person to do, in the Republic, any act which the owner has the exclusive right to do or to authorise.'
[44] Section 11B provides that copyright in a computer program vests the exclusive right to reproduce or to authorise the reproduction of the computer program and to do certain other acts not presently relevant in respect of the computer program in the Republic. It is, however, not only the reproduction of the entire work that would constitute an infringement. In terms of s 1(2A), the reproduction of a work is, unless the context otherwise indicates, to be construed as a reference to the reproduction of a substantial part of the work.
[45] The first respondent reproduced part of the Data Explorer program in its Brewer's AMPS program, and Brewer caused it to do so. The respondents submitted that such reproduction was not substantial. However, where a part of a work is reproduced, the question whether a substantial part had been reproduced depends much more on the quality than the quantity of what had been taken.11 It is true that, in this case, only 26% of the graphic component and 83% of the search component, consisting of 63 lines of several thousand lines of source code, had been copied, but then, those lines were copied because Bento found it too difficult to write them himself. These components were clearly considered to be a valuable ingredient of the program by both Haupt and the respondents. For these reasons the copying referred to, in my view, constituted the reproduction of a substantial part of the Data Explorer program. It follows that the first and the second respondents infringed Haupt's copyright in the Data Explorer program.
[46] The respondents agreed that the Brewer's AMPS program would be marketed in South Africa and that Coetzee would receive a royalty of 15% of the full sales price of each sale. Coetzee assisted the first and second respondents in infringing the appellant's copyright in the Data Explorer program by providing the source code in respect of the search function and also the source code required to incorporate the graphics server. In the premises Coetzee made common cause with the first and second respondents and co-operated with them insofar as the infringement by them of the appellant's copyright in the Data Explorer program in South Africa is concerned. By doing so Coetzee himself infringed the appellant's copyright in the Data Explorer program in South Africa.12
[47] The tree-preparer program and the converter program do not form part of the Brewer's AMPS program. They were in possession of Coetzee and were used by him to create tree.txt, answers and weightings databases in respect of the AMPS2000b data. In doing so, neither he nor any of the other respondents did, or caused any other person to do, any act as contemplated in s 11B, which Haupt, as owner of the copyright, had the exclusive right to do. Haupt was unable to advance any basis for his contention that his copyright in respect of these programs had been infringed.
[48] Haupt's case is that his copyright in the questions compilations done by him was infringed, in that each one of them 'was reproduced in first respondent's program in the exact same manner and form and thereafter sold by first respondent to its clients'. The case is not borne out by the evidence. As I understand the evidence, the compilations were no longer required after the tree.txt files had been created.
[49] The order in terms of which the matter was referred to trial was made by consent. All the parties are, therefore, to blame for the fact that the trial lasted 33 Court days as a result of various irrelevant issues having been canvassed. In the circumstances, I consider it just and equitable that Haupt, who should have succeeded in the High Court, should have been deprived of 50% of his costs.
[50] Haupt also appealed against the costs order made by the High Court in respect of two interlocutory applications, one on 11 September 2002 and the other on 11 November 2002, relating to discovery. In respect of the first of these applications, the High Court ordered that the costs would be costs in the cause. In respect of the latter application, the High Court considered it reasonable that the parties bear their own costs. Haupt could not point to any irregularity or misdirection and could not submit that a court, acting reasonably, could not have made these costs orders. In the circumstances, this Court cannot interfere with them.13
[51] In the result, the following order is made:
- The appeal is upheld with costs, including the costs of two counsel.
- The order by the High Court is set aside and replaced with the following order:
'1 The respondents are interdicted from infringing the applicant's copyright in its computer program known as ''Data Explorer''.
2 The respondents are ordered to deliver up, within 7 days, all infringing copies of the work to the applicant.
3 The respondents are ordered, jointly and severally, to pay 50% of the costs of suit, including:
3.1 The qualifying fees of Mr Marius Bosman.
3.2 The costs of the Anton Piller application, including the costs of the supervising attorney and experts used therein.
3.3 The costs of the application on 11 September 2002.'
Harms JA, Mthiyane JA, Cloete JA and Lewis JA concurred.
Appellant's Attorneys: Jacques Viljoen, Bellville; Symington & De Kok, Bloemfontein. Respondents' Attorneys: Musto Brindley Inc, Tokai, Cape Town, Webbers, Bloemfontein.
1 The appropriate order in this case would have been one directing that the notice of motion should stand as a simple summons, that a declaration be filed within a fixed time and that the Uniform Rules dealing with pleadings and the conduct of trials would thereafter apply.
2 See s 2(3) of the Act which provides:
'A work shall not be ineligible for copyright by reason only that the making of the work, or the doing of any act in relation to the work, involved an infringement of copyright in some other work.'
3 Biotech Laboratories (Pty) Ltd v Beecham Group plc and Another2002 (4) SA 249 (SCA) at 257H - I
4 See Ricketson The Law of Intellectual Property: Copyright, Designs and Confidential Information at para 14.30. See also Dean Handbook of South African Copyright Law at para 4.8.5 Laddie, Prescott and Vitoria The Modern Law of Copyright and Designs 2 ed at para 20.60.
6 Cf Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 (HL) at 276 - 7.
7 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 (HL) at 277 - 8, 281 - 2, 287 and 292; Autospin (Oil Seals) Ltd v Beehive Spinning (a firm) [1995] RPC 683 (Ch) at 694 (30 - 45). Laddie, Prescott and Vitoria The Modern Law of Copyright and Designs 2 ed at para 2.56, p 47; and Garnett, Davies and Harbottle Copinger and Skone James on Copyright 15 ed in para 3.128 at 119. See also Klep Valves (Pty) Ltd v Saunders Valve Co Ltd1987 (2) SA 1 (A) at 22H - 23B in which it was held that 'originality' in terms of the 1911 British Act required original skill or labour.
8 [2004] 1 SCR 339 at para 25 (2004 SCC 13 (Canlii)).
9 It should be noted that no mention is made of labour. In para 24 it is said '(t)he ''sweat of the brow'' approach to originality is too low a standard'. In this regard the Canadian law differs from our law and the law of the United Kingdom, as also the Australian law. See Waylite Diary CC v First National Bank Ltd1995 (1) SA 645 (A) at 652G - 653C and, in respect of the Australian law, Ricketson The Law of Intellectual Property: Copyright, Designs and Confidential Information at paras 7.35 and 7.60, where it is said: '(I)f the expression in question represents the independent application of knowledge, judgment, skill or labour on the part of the author, this will be sufficient for the statutory requirement (of originality).' Whether we should, in due course, follow the Canadian approach need not be decided now.
10 Ricketson The Law of Intellectual Property: Copyright, Designs & Confidential Information at para 14.180.
11 See Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 (HL) at 276, quoted with approval in Biotech Laboratories (Pty) Ltd v Beecham Group plc and Another2002 (4) SA 249 (SCA) at para [9]. See also Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd1998 (2) SA 965 (SCA) at 972G - J.
12 Compare Morton-Norwich Products Inc and Others v Intercen Ltd [1978] RPC 501 at 514(40) - 516(40).
13 Attorney-General, Eastern Cape v Blom and Others1988 (4) SA 645 (A) at 670D - F.
3.3.3 King v The South African Weather Service 2009 (3) SA 13 (SCA) 3.3.3 King v The South African Weather Service 2009 (3) SA 13 (SCA)
KING v SOUTH AFRICAN WEATHER SERVICE 2009 (3) SA 13 (SCA)
|
Citation |
2009 (3) SA 13 (SCA) |
|
Case No |
716/07 |
|
Court |
Supreme Court of Appeal |
|
Judge |
Harms ADP, Cloete JA, Cachalia JA, Leach AJA and Griesel AJA |
|
Heard |
November 3, 2008 |
|
Judgment |
November 27, 2008 |
|
Counsel |
ESJ van Graan SC for the appellant. |
|
Annotations |
Flynote : Sleutelwoorde
Intellectual property - Copyright - Ownership - Copyright in computer program - Whether program made in course of employment of creator and thus vesting in employer - Practical, common-sense approach directed at facts usually producing correct result - Issue remaining essentially factual and depending on terms of employment contract and particular circumstances in which particular work created - Copyright Act 98 of 1978, s 21(1)(d).
Headnote : Kopnota
In an action in the High Court, the appellant sought to enforce a copyright claim in certain weather computer programs against his former employer (the respondent). The appellant claimed to have created the programs in his own time, at home, to assist him personally in the performance of his duties as employee; and that it had not been part of his duties as meteorologist to write computer programs. Consequently, he claimed, the programs had not been 'written in the course and scope' of his employment and ownership of the copyright in the programs vested not in his employer but in him. The High Court dismissed his claim and he appealed against that decision to the Supreme Court of Appeal.
Section 21(1)(d) of the Copyright Act 98 of 1978 provides that where a work is 'made in the course of the author's employment by another person under a contract of service', the employer is 'the owner of any copyright subsisting in the work'.
Held, that the phrase 'in the course of employment' was unambiguous and did not require anything by way of extensive or restrictive interpretation. A practical and common-sense approach directed at the facts would usually produce the correct result. (Paragraph [13] at 18E - F.)
Held, further, that it was dangerous to formulate generally applicable rules to determine whether or not a work was authored in the course of the employee's employment. It remained a principally factual issue that depended not only on the terms of the employment contract but also on the particular circumstances in which the particular work was created. (Paragraph [17] at 19G - 20B.)
Held, further, that in the present case the factual basis for the appellant's claim was not borne out by the objective evidence. (Paragraphs [18] - [23] at 20B - 21G.)
Held, further, that the court a quo had been correct in finding that the programs E had indeed been made in the course of the appellant's employment. Appeal dismissed. (Paragraph [24] at 21H - I.)
Cases Considered
Annotations
Reported cases
Southern African cases
Bezuidenhout NO v Eskom2003 (3) SA 83 (SCA) ([2003] 1 All SA 411): dictum in para [21] applied
Biotech Laboratories (Pty) Ltd v Beecham Group plc2002 (4) SA 249 (SCA) ([2002] 3 All SA 652): applied
Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd G 2006 (4) SA 458 (SCA): referred to
Memory Institute SA CC t/a SA Memory Institute v Hansen2004 (2) SA 630 (SCA): referred to
Morewear Industries (Rhodesia) Pvt Ltd v Irvine (1959 - 1963) Burrell's Patent Law Reports 202: referred to
Ngubetole v Administrator, Cape and Another1975 (3) SA 1 (A): referred to
Trewhella Bros (UK) Ltd v Deton Engineering (Pty) Ltd Stranex Judgments on Copyright 57: referred to.
Foreign cases
Ashdown v Telegraph Group Ltd [2002] RPC 5 (CA) 235 ([2001] EWCA Civ 1142): compared
Avtec Systems Inc v Peiffer 67 F 3d 293 (4th Cir 1995) (38 USPQ 2d 1922): referred to
British Reinforced Concrete Engineering Co Ld v Lind (1917) 34 RPC 101 (Ch): compared
Butterworth & Co (Publishers) Ltd v Ng Sui Nam [1987] RPC 104 (Singapore High Court): compared
Community for Creative Non-Violence v Reid 490 US 730 (1989): referred to
Genzmer v Public Health Trust of Miami-Dade County 219 F Supp 2d 1275 (SD Fla 2002): referred to
Ilkiw v Samuels and Others [1963] 2 All ER 879 (CA): applied
Liffe Administration and Management v Pinkava [2007] EWCA Civ 217: referred to
Miller v CP Chemicals Inc 808 F Supp 1238 (DSC 1992): referred to
Noah v Shuba [1991] FSR 14 (Ch): referred to
Stephenson Jordan & Harrison Ltd v Macdonald & Evans (1952) 69 RPC 10 (CA): referred to
Théberge v Galerie d'Art du Petit Champlain Inc [2002] 2 SCR 336: compared
Statutes Considered
Statutes
The Copyright Act 98 of 1978, s 21(1)(d): see Juta's Statutes of South Africa 2007/8 vol 2 at 2-201.
Case Information
Appeal from a decision in the Transvaal Provincial Division (RD Claassen J). The facts appear from the reasons for judgment.
ESJ van Graan SC for the appellant.
AJ Bester for the respondent.
Cur adv vult.
Postea (November 27).
Judgment
Harms ADP:
Introduction
[1] The appellant, Mr Pieter King, sought to enforce a copyright claim in computer programs against the respondent, the South African Weather Service, in the High Court, Pretoria. His claim on the merits of the case was dismissed. The trial court refused leave to appeal but it was subsequently granted by this court. In the event, as will appear hereafter, we dismiss the appeal with costs on the ground that King was not the copyright owner.
[2] Mr King was an employee of many years' standing of the Chief Directorate of the Weather Bureau (the Bureau), which at all relevant times was a division of one or other State department. The respondent, a juristic person, was formed in terms of the South African Weather Service Act 8 of 2001 and it took over all the functions of the Bureau and replaced it as from 15 July 2001. In terms of s 18(1), King automatically became an employee of the respondent. He was essentially a meteorological technical officer in charge of the Upington office. A dispute arose concerning the source codes of computer programs developed by King, which he refused to hand over to the respondent. This led to his suspension and disciplinary steps on the ground of insubordination. He was subsequently found guilty at the disciplinary hearing and dismissed.
[3] On 12 June 2002, which was during the period of suspension, King sought to draw to the respondent's attention the fact that the programs he had written prior to 7 June 2000 'were not written in the course and scope' of his employment or 'under [the employer's] supervision and control'; instead, he alleged, as the person who exercised control over the making, he was the author. However, on the assumption that he may have authorised the respondent to use his programs, he gave notice of the termination of any licence with effect from 30 June 2002. The respondent did not comply with his demand and about a year later he instituted action claiming an interdict and damages.
[4] In the action, which is the subject of this appeal, King's case was in short that he had created a number of weather computer programs between 1980 and 2002; that they had been written in his own time, at home, to assist him personally in the performance of his duties as employee; that it had not been part of his duties as meteorologist to write computer programs; that he had authorised the respondent by means of a tacit licence to use the programs; that he had withdrawn the licence as from 30 June 2002; but that the respondent was nevertheless 'using' the weather programs to provide specialised weather forecasting and climate information and the like, and also reproduced or adapted them.
Basic copyright principles
[5] Before turning to the particular it may be convenient to set out in general terms certain basic copyright principles because copyright cases are technical and those relating to computer programs notoriously difficult.1 It is accordingly necessary, in enforcing any alleged copyright claim, to have regard to all the relevant statutory requirements necessary to establish a copyright claim in the name of a particular claimant, and to determine whether or not copyright infringement had taken place.
[6] Copyright is a creature of statute and has to be found within the four corners of a statute, in particular the Copyright Act 98 of 1978.2 Certain defined works (of which computer programs are one) are eligible for copyright under the Act. This assumes, however, that the work concerned is 'original' (s 2(1)) and has been reduced to a material form (s 2(2)). In addition, copyright must have been conferred by virtue of nationality, domicile or residence or as a result of first publication (ss 3 and 4). It is accordingly of the utmost importance for a copyright claimant at the outset to identify the work or works which are said to have been infringed by the defendant.
[7] Copyright infringement is (subject to an irrelevant exception) actionable 'at the suit of the owner of the copyright' (s 24(1)). It is only actionable at the suit of the author if the author is also the owner.
[8] The word 'author' has a technical meaning; and the author is not necessarily the person who first makes or creates a work. It depends on the nature of the work. In the case of a computer program, the author is 'the person who exercised control over the making of the computer program' (s 1 sv 'author').
[9] The author of a work that attracts copyright is usually the first owner of the copyright (s 21(1)(a)) but that need not necessarily be the case. An exception, which applies to computer programs amongst others, concerns the case of a work 'made in the course of the author's employment by another person under a contract of service': in this event the employer is 'the owner of any copyright subsisting in the work' (s 21(1)(d)). There is another relevant exception that concerns works which were made 'by or under the direction or control of the state' (s 5(2)) - ownership of any such copyright initially vests in the State and not in the author (s 21(2)).
[10] 'Using' a copyright work does not amount to copyright infringement. Primary infringement consists in the performance of an act, in the Republic, which the owner has the exclusive rights to do or to authorise without the latter's consent (s 23(1)). (Secondary infringement is not in issue and need not be discussed.) The exclusive rights of the owner depend on the nature of the work. In the case of computer programs the important rights are those of reproduction, adaptation and rental.3
[11] The issues in this case are many. In relation to the issue concerning the subsistence of copyright they concern authorship, originality and ownership (whether belonging to the author, the employer or the State). In respect of infringement the questions are whether the respondent had the consent (or licence) of the owner; the terms of the licence; the validity of the notice of cancellation; and whether King has established that the respondent had committed any infringing act since the date of revocation of the licence. In view of my conclusion it is unnecessary to resolve all of these issues.
Ownership of copyright: 'in the course of employment'
[12] For purposes of this appeal I shall assume that King authored, not only in the sense of compiling, but also in exercising control over the making of, the weather programs on which he relied - in other words, that he was the author as defined in the Act. I shall furthermore assume that the State is not the owner of the copyright by virtue of the provisions of s 5(2) because the works had not been made 'by or under the direction or control of the state'.4 I accordingly proceed to consider whether, in terms of s 21(1)(d), the computer programs were authored by King 'in the course of [his] employment by [the Bureau] under a contract of service'. The inquiry is limited to the Bureau (as part of the State) because the works on which King relied were allegedly all made before the respondent had been constituted. In other words, if the works were made in the course of his employment with the Bureau and ownership in the works accordingly vests in the State, King had no rights to enforce against the respondent.
[13] The wording of s 21(1)(d) can be traced back to at least s 5(1)(b) of the British Copyright Act, 1911, which was incorporated into our Patents, Designs, Trade Marks and Copyright Act 9 of 1916 by means of a schedule, and which formed the basis of copyright law in the British Empire and subsequently in most Commonwealth countries. Except for a short hiatus, the phrase 'in the course of employment' has since remained part of our statute law.5 It is a stock concept in employment law (formerly known as the law of master and servant). The term is unambiguous and does not require anything by way of extensive or restrictive interpretation. A practical and common-sense approach directed at the facts will usually produce the correct result.
[14] In the court below, and initially in the heads of argument, King submitted (although not necessarily in these terms) that the phrase meant that the work must have been authored 'in terms of' the contract of employment - in other words, unless the employee had to create the work in terms of the employment contract, ownership does not vest in the employer. The submission may have had some merit had the Act provided as s 39 of the British Patents Act, 1977, provides, namely that the employer is the owner of an invention made 'in the course of' the 'normal duties' of the employee. This provision changed the common-law test,6 which does not refer to 'normal duties' but it retained the 'in the course of' requirement and did not supplant it with an 'in terms of' requirement.7 Counsel, wisely, did not persist with the argument but, as will become apparent, King's evidence was sculptured to fit the proposition.8
[15] Copyright law in the USA is somewhat different: it provides that the employer is considered to be the 'author' and in consequence the owner of a work made for hire. A 'work made for hire' is defined in terms that echo those used in s 21(1)(d) of the Act - it is a 'work prepared by an employee within the scope of his or her employment'.9 The statute does not define 'scope of employment', but the US Supreme Court held in Community for Creative Non-Violence v Reid 490 US 730 (1989) that Congress incorporated common-law agency principles into the copyright statute and intended to describe the conventional master - servant relationship as understood by common-law agency doctrine. Consequently, to show that the creation of a work was within the scope of the employee's employment, the employer has to establish that (a) the work was of the type for which the employee was hired to perform; (b) the employee's creation of the work occurred 'substantially within the authorised time and space limits' of his post; and (c) the creation was 'actuated, at least in part, by a purpose to serve' the employer's interests.10 The court rejected other tests espoused by earlier courts, namely whether the employer retained the right to control the product or actually wielded control over its creation.
[16] Counsel for the respondent relied heavily on US jurisprudence - and there are cases that are, on the facts, hardly distinguishable from those in this case11 - but, as Michael D Birnhack recently pointed out, agency-law principles, which were developed in the context of tort law, do not necessarily fit the copyright context.12 The same may be said about the argument of the respondent that the tests developed in the framework of vicarious liability should apply. Again, it appears to be wrong to apply delictual 'principles' without more to determine questions of ownership in the arcane area of copyright, especially since policy considerations must differ.13
[17] Having had regard to a number of judgments,14 both local and from elsewhere, it appears to me to be dangerous to formulate generally applicable rules to determine whether or not a work was authored in the course of the employee's employment. It remains by and large a factual issue that depends not only on the terms of the employment contract but also on the particular circumstances in which the particular work was created.15 I accordingly turn to a discussion of the salient facts.
The facts
[18] It is convenient to begin with a discussion of the 'business' of the Bureau. By its very nature a weather bureau collects, processes, analyses and stores weather-related data. To do this the Bureau developed a Microsoft-based Windows Automated Weather System (WAWS), which contained a broad collection of computer-program modules used to capture, process and store weather-related data. It is common cause that all the 'infringing' programs were written to conform with and were incorporated into and became an integral part of the Bureau's WAWS. King's programs were, accordingly, directly related to the 'business' of the Bureau. They captured, rectified and transmitted weather data to head office. And, as he reluctantly had to concede, the programs were to the advantage of his employer. Much, though, was made by King of the fact that the Bureau was not a commercial organisation and that the respondent, in terms of its governing Act, has to generate income. As I understand King's point, it is that his tacit licence did not cover commercial use of the programs by the respondent. The licence issue, however, arises only once the ownership issue has been determined.
[19] Another important aspect to consider is the nature of King's duties in terms of the employment contract. In this regard the matter must be looked at broadly and not by dissecting the employee's task into its component activities.16 His duties changed over the years but one would not ordinarily include computer programming as part of the duties of a meteorologist. However, that is not the full picture. As meteorologist King had to collect and collate meteorological data and transmit it to head office for analysis and storing. He developed his programs for this very purpose. Although he may have done it to make his own job easier, he did it because of his employment with the Bureau.
[20] This leads to another and most significant factor. It is clear that, but for his employment with the Bureau, King would not have created these works. There is accordingly a close causal connection between his employment and the creation of the programs. In other words, his employment was the causa causans of the programs. Some of the programs were specifically written for other weather stations of the Bureau at their request and for their use. They were not created for external use by others; instead, they were purely work-related. Importantly, the Bureau prescribed the format of the programs and had to approve of them before they could be implemented and used in the system.
[21] Reverting to King's evidence that he was the owner of the copyright because the works had not been prepared in the performance of his duties, the problem is that it is belied by the objective facts. For instance, King prepared quarterly reports about the performance of his duties. They dealt with his merits as employee and they stressed that the major component of his work was programming. A job-evaluation investigation in April 2000, with which he agreed at the time, stated that he was responsible for system development and programming and calibration of the Bureau's automatic weather station network. The estimate was that he was, at the time, spending some 50% of his time on system development and programming.
[22] This also controverts his evidence that he had compiled the programs after hours. Although it must be accepted that his initial programming took place at home it is clear that as time passed he spent increasingly more of his office hours developing programs, to such an extent that he failed to give sufficient attention to his duties as head of the Upington office. In any event, the fact that an employee creates a work at home (or even during office hours at the premises of the employer) is but a factor that has to be taken into account in answering the question whether the work was made in the course of his employment.
[23] Mr King also relied on the Personnel Administration Standard, which contained a personnel standard for a meteorological technician. It did not list computer programming as part of the job description but the document in its terms was not intended to be all-embracing and anticipated that a fuller job description could be issued (as happened) and, as said before, a work may be created in the course of employment without having been created in terms of the contract. In addition, the scope of employment may change explicitly or by implication.17 Lastly, he relied on an industrial settlement agreement, which provided that the April 2000 job evaluation would be cancelled. The meaning of the settlement agreement need not be considered as cancellation could not change ownership retrospectively.
[24] It is not necessary to deal with the evidence any further. The court below did a careful analysis of all factors relevant to the question and came to the conclusion that the works had been made in the course of King's employment. King's counsel was not able to show that the court below had erred. To the contrary, I am satisfied that the court did not. This conclusion obviates the need to consider the other issues18 and the appeal stands to be dismissed with costs.
[25] The following order is made: The appeal is dismissed with costs.
Cloete JA, Cachalia JA, Leach AJA and Griesel AJA concurred.
Appellant's Attorneys: Botes Attorneys, Pretoria; Claude Reid Attorneys, Bloemfontein.
Respondent's Attorneys: Spoor & Fisher, Pretoria; Van Zyl Le Roux & Hurter, Pretoria; Israel Sackstein Matsepe Inc, Bloemfontein.
1 Memory Institute SA CC t/a SA Memory Institute v Hansen2004 (2) SA 630 (SCA); Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd2006 (4) SA 458 (SCA).
2 Section 41(4). Compare Ashdown v Telegraph Group Ltd [2002] RPC 5 (CA) 235 ([2001] EWCA Civ 1142); Butterworth & Co (Publishers) Ltd v Ng Sui Nam [1987] RPC 104 (Singapore High Court); Théberge v Galerie d'Art du Petit Champlain Inc [2002] 2 SCR 336.
3 Section 11B.
'Nature of copyright in computer programs - Copyright in a computer program vests the exclusive right to do or authorise the doing of any of the following acts in the Republic:
(a) Reproducing the computer program in any manner or form;
(b) publishing the computer program if it was hitherto unpublished;
(c) performing the computer program in public;
(d) broadcasting the computer program;
(e) causing the computer program to be transmitted in a diffusion service, unless such service transmits a lawful broadcast, including the computer program, and is operated by the original broadcaster;
(f) making an adaptation of the computer program;
(g) doing, in relation to an adaptation of the computer program, any of the acts specified in relation to the computer program in paragraphs (a) to (e) inclusive;
(h) letting, or offering or exposing for hire by way of trade, directly or indirectly, a copy of the computer program.'
4 See Biotech Laboratories (Pty) Ltd v Beecham Group plc2002 (4) SA 249 (SCA) ([2002] 3 All SA 652).
5 Discussed in Biotech Laboratories supra.
6 Liffe Administration and Management v Pinkava [2007] EWCA Civ 217.
7 Presumably the common-law approach still applies to South African patents since the current Patents Act 57 of 1978 does not deal with patents by employees. The Designs Act 195 of 1993 s 1(1) sv 'proprietor' is similar to the Copyright Act.
8 See British Reinforced Concrete Engineering Co Ld v Lind (1917) 34 RPC 101 (Ch).
9 17 USC § 201(b) read with § 101.
10 Avtec Systems Inc v Peiffer 67 F 3d 293 (4th Cir 1995) (38 USPQ 2d 1922).
11 Genzmer v Public Health Trust of Miami-Dade County 219 F Supp 2d 1275 (SD Fla 2002); and Miller v CP Chemicals Inc 808 F Supp 1238 (DSC 1992) are particularly instructive. 12 Michael D Birnhack 'Working Authors' (October 2008) fn 3. Tel Aviv University Legal Working Paper Series. www.law.bepress.com/ taulwps/fp/art97/ (accessed 4 November 2008).
13 See, in another context, Ngubetole v Administrator, Cape and Another1975 (3) SA 1 (A) at 8G - 9F. Also Laddie, Prescott & Vitoria The Modern Law of Copyright and Designs (2 ed) vol 1 para 11.37.
14 Trewhella Bros (UK) Ltd v Deton Engineering (Pty) Ltd Stranex Judgments on Copyright 57; Stephenson Jordan & Harrison Ltd v Macdonald & Evans (1952) 69 RPC 10 (CA); Noah v Shuba [1991] FSR 14 (Ch); Morewear Industries (Rhodesia) Pvt Ltd v Irvine 1960 Burrell's Patent Law Reports 202 (Federation of Rhodesia and Nyasaland).
15 Compare British Reinforced Concrete Engineering Co Ld v Lind (1917) 34 RPC 101 (Ch) 109.
16 Per Diplock LJ in Ilkiw v Samuels and Others [1963] 2 All ER 879 (CA), quoted in Bezuidenhout NO v Eskom2003 (3) SA 83 (SCA) ([2003] 1 All SA 411) para 21, both dealing with tort or delict.
17 Noah v Shuba [1991] FSR 14 (Ch).
18 It may be noted, though, that counsel was unable to point to any evidence which established an infringing act after the date on which the licence was supposed to have ceased. The only evidence related to the use of programs and even WAWS was no longer being used by the respondent at the time of the trial.
3.3.4 Peter-Ross v Ramesar 2008 (4) SA 168 (C) 3.3.4 Peter-Ross v Ramesar 2008 (4) SA 168 (C)
PETER-ROSS v RAMESAR AND ANOTHER 2008 (4) SA 168 (C)
Citation
2008 (4) SA 168 (C)
Case No
2064/06
Court
Cape Provincial Division
Judge
Desai J
Heard
March 14, 2008
Judgment
March 14, 2008
Counsel
WG Burger SC for the applicant.
O Rogers SC for the respondents.
Annotations
Flynote : Sleutelwoorde
Intellectual property - Copyright - Literary work - Author - Joint author - Who is - Article dealing with outcome of certain scientific research on which writer and claimant having collaborated from outset with view to co-authoring article - Claimant not writing or dictating any part of article - Claimant and writer joint authors.
Headnote : Kopnota
The applicant prepared the draft of an article which dealt with certain scientific research on which she and the first respondent had been collaborating, under the auspices of the second respondent, and cited both herself and the first respondent as authors of the article. When she submitted the final article for publication in an industry journal, citing herself as sole author of the article, the first respondent objected to the publication of the article on the ground that he believed the article to embody work done by him and the applicant jointly. In a bid to achieve publication of the article, the applicant launched the present application in the High Court for a declaratory order that she had the sole copyright in the article and its draft. The respondent resisted the application principally on the basis that he was joint author of the article in that, even though he had not contributed to the written formulation of the article, it was a product of his and the applicant's scientific collaboration in which they engaged with the common intention of producing an article of joint authorship.
Held, that under s 23(1), read with s 6(a), of the Copyright Act 98 of 1978, the article would unlawfully infringe the first respondent's joint copyright in the draft if (i) the first respondent was joint author of the draft and (ii) the article copied a significant portion of the draft. (At 171B - C.)
Held, further, as to (i), that the evidence established that the parties collaborated from the outset and that they envisaged co-authoring an article embodying the outcome of their research. (At 172B - C.)
Held, further, that where the ideas recorded were the product of a collaborative endeavour and the one collaborator undertook the physical recording of the ideas, the collaborators could properly be regarded as being joint authors. What distinguished that type of case from the situation where it was said that there was no copyright in ideas was that there was collaboration from the outset and the contributing of ideas was directed towards the creation of a literary work. (At 176D - E.)
Held, further, as to (ii), that it appeared that the first draft had been reproduced almost in its entirety in the article. The article also contained certain additional text on which the parties had collaborated. (At 173F.)
Held, further, that it followed that the article unlawfully infringed the first respondent's joint copyright in the draft. (At 176F - G.)
Held, further, that since almost the entire draft had been copied in the article, the applicant was not entitled to a declarator that she was the owner of the copyright in the article. (At 176I - J.) Application dismissed.
Semble: The article, like the draft, was a work of collaboration. The additional text, while textually separable from the reproduced text, could not be regarded as something to which the applicant exclusively contributed. The additional text did not represent new scientific content but only a narrative recordal of what was clearly in the figures contained in the draft. The applicant and the first respondent were thus co-authors not only of the reproduced text but also of the additional text, and thus of the whole article. (At 177C - E.)
Cases Considered
Annotations
Reported cases
Foreign cases
Brighton v Jones [2004] EWHC 1157 (Ch): dictum in para [63] applied
Cala Homes (South) Ltd and Others v Alfred McAlpine Homes East Ltd [1995] FSR 818 (Ch): applied
Donoghue v Allied Newspapers Ltd [1937] 3 All ER 503 (Ch): distinguished
Heptulla v Orient Longman Ltd and Others [1989] FSR 598: applied
Sweeney v MacMillan Publications Ltd [2002] RPC 35: referred to.
Statutes Considered
Statutes
The Copyright Act 98 of 1978, ss 6(a) and 23(1): see Juta's Statutes of South Africa 2006/7 vol 2 at 2-198 and 2-202.
Case Information
Application for a declaratory order that the applicant had sole copyright in particular article. The facts appear from the judgment of Desai J.
WG Burger SC for the applicant.
O Rogers SC for the respondents.
A Cur adv vult.
Postea (March 14).
Judgment
Desai J:
This is a rather unseemly wrangle between two academics at the University of Cape Town (UCT), the second respondent in these proceedings. The applicant, a consultant psychiatrist, is a senior lecturer at the said university. The first respondent, a geneticist, is a professor and, inter alia, the director of the university's Human Genetics Research Unit.
In 1996 the division of Human Genetics at UCT launched a research project entitled The Molecular Genetics of Bipolar Disorder. First respondent leads the project. It focuses on the connection between bipolar psychiatric disorders and the genetic make-up of the patients. The applicant joined the project in 2001. Her principal function was to explore first respondent's idea that the genetic location of bipolar disorders can be improved by concentrating on patients who were not only bipolar but also had some other genetic disorder.
The applicant and the first respondent worked together in developing this idea until early 2005. There is some dispute as to the nature and extent of their collaboration. I shall revert to this aspect in due course. In any event, a draft article (the first draft) was prepared by the applicant at the end of 2004. The paper dealt with the research being done and both the applicant and the first respondent were cited as its authors.
The working relationship between the applicant and the first respondent disintegrated thereafter. The breakdown in their relationship was precipitated by the fact that the applicant wanted to publish the hypotheses as soon as possible while the first respondent was reluctant to do so. He was of the view that more empirical evidence in support of the hypotheses had to be obtained before publication.
On 20 January 2006 the applicant informed the first respondent that an article she had written had been submitted to and accepted by Molecular Psychiatry (MP), for publication in March 2006. Though the first respondent did not see the article at that stage, he believed that the article embodied work done by him and the applicant jointly. This belief was communicated to a Dr Licinio at MP and the publication of the article was stopped.
The applicant then launched this application with the stated purpose of achieving the publication of the aforementioned article. However, she seeks herein a declaratory order to the effect that she has the sole copyright in the article and its accompanying article. The first respondent resists the application principally on the basis that he is the joint author of the article. While he did not contribute to the written formulation of the article, first respondent contends that it is a product of scientific collaboration with the common intention of producing an article of joint authorship.
As Mr O Rogers SC, who appeared on behalf of the first respondent, has pointed out, the declarator sought is singularly inappropriate for applicant's said purpose. The editors of MP require clearance from UCT before publishing the article. It is UCT, and not this court, which is required to assess questions of appropriate academic behaviour. An order by this court that the applicant is the owner of all copyright in and to the disputed article, would not establish that she is legally entitled to publish the article. If the first respondent is a joint author of the first draft and the MP article copies a significant portion of the said draft, the MP article would unlawfully infringe the first respondent's joint copyright in the first draft. (See s 23(1) of the Copyright Act 98 of 1978 (the Act) read with s 6(a).) Even if the said author is in law the owner of the copyright, it is inconceivable that any reputable academic journal would publish the article in such circumstances. It accordingly seems that the order sought by the applicant in these proceedings would not have any practical effect. This alone may constitute a sufficient basis for exercising my discretion in favour of the first respondent.
The other respondent herein, UCT, has elected to abide the decision of this court. However, prior to the commencement of these proceedings, it set up a committee of inquiry with professor SR Benatar as its chairperson. The committee concluded that though the applicant was not guilty of scientific misconduct, her conduct in relation to the first respondent constituted 'ethical misbehaviour in the research context'. With regard to the authorship of the article, it found that first respondent had met one of the requirements for authorship and had been deprived of the opportunity to make further contributions. The findings of the committee are to be reviewed by a higher-level committee. The editors were notified of the outcome of the Benatar Committee's findings. With regard to the said findings I note first respondent's comment that the applicant had not made the first draft available to the Committee. If it had been available, the Benatar Committee may well have found the applicant guilty not merely of ethical misbehaviour but of scientific misconduct in the strict sense.
The facts and circumstances which give some idea of the nature of the relationship between the parties and the extent of their collaboration warrant noting.
First respondent was instrumental in causing applicant to be invited to join the project. Over the period 2001 to 2005 they spent 'hundreds of hours' developing the hypotheses which lay at the heart of the research. They became increasingly excited at the revolutionary effect which their research might have on the classification and treatment of, and development of drugs for, a range of psychiatric disorders.
The hypotheses were developed jointly. Neither of them could have developed the hypotheses without the active participation of the other - the applicant as a psychiatrist and the first respondent as a geneticist.
Applicant and first respondent knew that for peer review purposes their research would have to be published in a leading medical journal or presented at a major international conference or both. According to first respondent it was applicant's responsibility to produce the draft of an article. She would come to first respondent's office with a portion of the draft which would be debated at length. Their discussions often involved line-by-line scrutiny and revision of the draft. First respondent's inputs would be recorded on the draft. During this period the interaction between them took place both orally and by way of emails.
Several factors corroborate first respondent's contention that a co-authored article embodying the outcome of their research was envisaged by the parties.
The emails which passed between them graphically illustrate what was intended. I quote from a few of the emails from applicant to the first respondent to illustrate the point:
27 August 2003:
Please never apologise . . . for not being a clinician . . . without your constant encouragement and probing questions and scientific approach and generosity of spirit I would not have travelled the long distance we have covered thus far together . . . this is not a distance that you can travel alone . . . it is only when we combine our talents and work and fly in the same direction that we will have the energy to fly the long distance that our destiny calls us to travel. . . .
16 September 2003:
At last the name . . . the title of our Nature article . . . Bipolar Spectrum Genome.
12 November 2003:
You know that I do not want to discuss the 'S' word [ie Schizophrenia] . . . but that we should be so lucky to have this American group do this (preliminary) paper which I think will assist us with compiling a subsection in our article on founder population. . . .
17 May 2004:
I am continuing to work and to think about all aspects of the search for psychiatric genes and the possible consequence underlying pathophysiology . . . for our paper . . . perhaps with a title of . . . identifying possible new candidate genes involved in psychiatric disorders.
On 8 November 2004 the applicant concluded an agreement with one Karen Adamson in respect of artwork for the article. The terms of the agreement are recorded in a handwritten document signed by the applicant. It indicates that drawings are for an article by the applicant and the first respondent. It also expressly records that the 'art belongs to both parties', namely the applicant and the first respondent. A similar handwritten agreement was concluded with one Angela Ashley on 11 November 2004 for editing the article. It is also signed by the applicant and in express terms records that the article is by the applicant and the first respondent.
Further corroboration for the contention that the research and the resultant article and invention, if such, belonged to the applicant and first respondent jointly, is to be found in the Invention Disclosure Form submitted to UCT Innovation. Believing that their findings might be patentable, they jointly approached - on applicant's own version - lawyers attached to UCT Innovation and were advised to complete the disclosure form. It indicates that both the applicant and the first respondent are the inventors. The document was handed to UCT Innovation by the applicant personally or, at least, with her consent.
The first draft in fact bears the name of the first respondent as co-author. In her founding papers no mention is made by the applicant of the existence of any joint article. She conveys the impression in her founding papers that first respondent's role was confined to discussions about testing hypotheses empirically. She also suggests that work on the article effectively started only after the relationship between the parties had allegedly broken down. When faced with exposure, the applicant, in her replying papers, offers a somewhat contrived explanation for citing the first respondent as co-author. She alleges that he was cited as such because of her admiration and respect for him and her belief that it was a convention to include the name of one's head of department. In the same affidavit applicant concedes that 'gift authorships' are regarded in academia as unethical and a practice to be eliminated. It seems more likely, as Rogers SC submitted, that first respondent's name was included because applicant believed that he had indeed made a material contribution.
It seems that the first draft is reproduced almost in its entirety in the MP article. No original skill or labour went into the copying of the reproduced text. The copied portions are set out in some detail in first respondent's supplementary answering affidavit. These allegations are not disputed by the applicant in her reply. The MP article also contains additional text which, according to the first respondent, is the detailed technical description of the hypotheses summarised and depicted schematically in the figures, which have not been materially changed since last seen by him. First respondent contends that it is the technical detail which occupied most of the many hours he and the applicant spent together from 2001 onwards.
First respondent does not allege that he did any work on the MP article. His claim to co-authorship of the said article is not based on an allegation that he wrote or dictated any part of the article. It is premised on the contention that the article contains the greater part of the first draft to which he did contribute. In this regard, Mr WG Burger SC, who appeared on behalf of the applicant, argued that the first respondent cannot point to a single sentence in the first draft which he can claim to be his own nor is he able to say that he formulated any significant portion of the draft which the applicant took down as his scribe. According to Burger SC first respondent cannot be a joint author of the article as he did not make any contribution to actually writing it. He argued that there is no copyright in ideas or suggestions, only in the material form in which ideas are cast. It follows that a person who merely makes suggestions and criticisms cannot qualify as a joint author for copyright purposes.
In support of the aforegoing proposition, Burger SC referred, inter alia, to Donoghue v Allied Newspapers Ltd [1937] 3 All ER 503 (Ch). In this matter newspaper articles intended for consumption by horse-racing enthusiasts were based upon the anecdotes recounted by a famous jockey. The evidence did not indicate that the jockey - the plaintiff - and the author of these articles were intended to feature as co-authors, or that the writer simply wrote down the plaintiff's words. The court found that the plaintiff did not have the literary ability to write articles for any newspaper at all and presumably his ability to comment on the merits of the resultant work was rather limited. Though the claim to authorship or joint authorship was rejected, the judge did so 'rather unwillingly'.
Unlike Donoghue (supra) first respondent was not in the position of a non-writer conveying information to an author. First respondent - unlike the applicant - has published extensively in South Africa and internationally. Quite patently he has the literary skills to draft scientific articles in his field of expertise. He was the senior figure in a scientific collaboration with the necessary skills to review and comment upon applicant's draft. Moreover from the outset an article of joint authorship was envisaged by the parties.
Rogers SC has referred the court to a decision of the High Court of India in which a different result to Donoghue was reached. The case of Heptullah v Orient Longman Ltd and Others [1989] FSR 598 concerned the authorship of the book India Wins Freedom. One Kabir wrote the book in English. It was based on recollections communicated to him by one Azad in Urdu. Azad was able to read English. He worked through Kabir's draft and suggested amendments. The court held that Azad and Kabir were joint authors. In reaching his conclusion Kirpal J remarked as follows:
A literary work consists of matter or material which is expressed in a language and is written down; both the subject matter and the language are important. It is difficult to comprehend, or to accept, that when two people agree to produce a work where one provides the material, on his own, and the other expresses the same in a language which is presentable to the public then the entire credit for such an undertaking or literary work should go to the person who has transcribed the thoughts of another. To me it appears that if there is intellectual contribution by two or more persons, pursuant to a pre-concerted joint design, to the composition of a literary work then those persons have to be regarded as joint authors.
The other cases cited by applicant's counsel relate either to musical works or stage plays and are clearly distinguishable on their facts. They do not support the sweeping proposition that in our law a co-author's contribution can never be confined to ideas as distinct from expression. In fact, in Brighton v Jones [2004] EWHC 1157 (Ch) Park J comments in passing as follows:
Copyright can subsist in a story or a plot, so that if what happened in rehearsals was that Miss Brighton determined what the plot of the play was to be (or Miss Brighton and Miss Jones determined in collaboration what it was to be), and then Miss Jones actually wrote the words to give effect to the plot, I can see that Miss Brighton might have been a joint author.
Similarly in Cala Homes (South) Ltd and Others v Alfred McAlpine Homes East Ltd [1995] FSR 818 (Ch) Laddie J held that to have regard merely to 'who pushed the pen' is to take too narrow a view of authorship.
The proposition that in order to qualify him as a co-author the contribution of a collaborator has to relate to the form of the work rather than its intellectual content, is not always correct. Though there is no copyright in ideas, a literary work is most often a vehicle for ideas. Once ideas have been captured in words on paper the ideas are an important part of the literary work.
In this instance the first draft is the product of agreed collaboration with a view to publishing a co-authored article embodying scientific hypotheses and research. It is a work in which the scientific content was of greater importance than literary expression. Where the essence of the work is scientific, unlike a novel or a play, the precise mode of expression is of far lesser importance. The major contribution of both parties was in the realm of scientific ideas rather than literary formulation. Lesser expertise was required for the formal recording of these ideas. First respondent's contribution, however, was not limited to his substantial contribution to the scientific ideas embodied in the first draft. Through his critical review of the earlier drafts he also made a material contribution to the form of the said article.
With regard to copyright, the MP article is a 'literary work' as defined in the Act and the graphics made at the end of the article appear to be 'artistic works'. It is not disputed by the applicant that separate copyright may rest in the first draft, even though the draft was not in a form ready for commercial exploitation (see Sweeney v MacMillan Publications Ltd [2002] RPC 35 at 666 - 9).
The Act defines joint authorship in s 1 as 'a work produced by the collaboration of two or more authors in which the contribution of each author is not separate from the contribution of the other author or authors'.
An author in the Act is 'the person who first makes or creates the work'.
It seems that joint authorship exists where two or more people collaboratively 'make' or 'create' a work by way of contributions which are not separable. Burger SC suggested that in order to qualify as a joint author, the collaborators' contribution must be 'significant'. The word 'significant' is not used in the statutory definition of 'work of joint authorship'. The cases which have used the word appear to convey the idea that the contribution should not be so trifling as to be disregarded as de minimis. In any event the authors of Copinger & Skone James on Copyright 14 ed para 4.4 point out that the contributions of co-authors need not be equivalent or of the same kind and expressly recognise that there can be joint authorship where two people make a contribution to the work's final expression, one being the person actually responsible for committing the work to paper, the other providing an input to what is recorded.
A person can 'make' or 'create' a work by dictating to a scribe or, at the other end of the spectrum, a person may verbally express an idea which another then embodies in a written form. In the latter instance the person who does the writing is the sole author. It is this type of case in which one finds dicta to the effect that there is no copyright in ideas.
In between these two situations are a variety of scenarios where it would be unwise to focus exclusively on contributions to the physical expression of the work. One such case is where two persons agree they will research and co-author an article. The ideas are quite obviously more important to the collaborators if the article is on a scientific topic. If they research and settle on the ideas to be recorded and it is left to one of them to produce a draft, there seems to be no reason why they should not be recognised as having jointly 'made' or 'created' the draft.
Where the ideas to be recorded are the product of collaborative endeavour and the one has undertaken the physical recording of the ideas the collaborators could properly be regarded as having jointly 'made' or 'created' the work. What distinguishes this type of case from the situation where it is said that there is no copyright in ideas is that there is collaboration from the outset and the contributing of ideas does not occur in vacuo but is directed towards the creation of a literary work.
The MP article, as I have already indicated, comprises the reproduced text plus the additional text. These two components of the MP article are clearly discernable. For the purposes of disposing of the present application it is not necessary for me to decide whether the first respondent is the co-author of the whole of the MP article. It is enough that he is the co-author of the reproduced text. The use in the MP article of the reproduced text infringed the copyright in the first draft held jointly by the applicant and the first respondent (see s 23(1) read with s 6(a) of the Act). Applicant's co-authorship of the first draft did not entitle her to reproduce the draft without the first respondent's consent.
Insofar as it is suggested that applicant's sole copyright in the MP article would be jeopardised only if the first draft formed a substantial or significant part of the MP article, such a proposition would not be correct. If copyright in the first draft rests in the applicant and first respondent as co-authors, such copyright would be violated by the reproduction of a substantial part of the first draft. It is irrelevant whether the copied text constituted a substantial part of the MP article (see s 6(a) read with s 1(2A); Brighton and Another v Jones (supra) para 63).
It seems that almost the entire first draft has been copied in the MP article. If this is correct, the applicant is not entitled to a declarator that she is the owner of the copyright in the MP article. Applicant's counsel endeavoured to meet this point by arguing that the first respondent made no significant contribution to the bulk of the material contained in the MP article and, in the circumstances, cannot be viewed as its co-author. However, if it is accepted that the first draft is itself a 'literary work' and the reproduced text in the MP article is simply a copying thereof, it is sufficient to preserve the first respondent's status as co-author of the reproduced text.
As Rogers SC has correctly pointed out the reproduced text is hardly insignificant. Apart from introducing the hypotheses and placing them in their scientific context, the reproduced text summarises the hypotheses themselves. It also includes all the figures which set out in dense schematic format the scientific details of the hypotheses. The MP article to a large extent merely reproduces in full narrative the detail already contained in the figures.
It is accordingly not necessary for me to decide whether the first respondent is a co-author of the entire MP article. I may, however, point out that the MP article was the end-product of the collaboration to which the parties had committed themselves in their agreement. The applicant could not change this by unilateral conduct. In any event, the MP article, like the first draft is a work of collaboration. The additional text, while textually separable from the reproduced text, cannot be regarded as something to which the applicant exclusively contributed. The additional text does not represent new scientific content but only a narrative recordal of what was clearly in the figures contained in the first draft. The applicant and the first respondent are thus co-authors not only of the reproduced text but also of the additional text, and thus of the whole MP article.
Assuming that the applicant has copyright in the MP article, Rogers SC has argued that on ground of public policy I may decline to recognise the copyright. The arguments advanced in this regard are compelling especially where they relate to the applicant's breach of the agreement between the parties. However, in the light of the conclusion to which I come, it is unnecessary for me to deal with this aspect any further.
In the result I am of the view that the applicant is not entitled to an order G that she has the sole copyright of the MP article. The application is accordingly dismissed with costs, including those occasioned by the enrolment of the matter on 10 and 24 March 2006.
Applicant's Attorneys: Jan S de Villiers.
Respondents' Attorneys: Brian Bacon & Associates.